OPPOSITION DIVISION
OPPOSITION No B 2 752 304
Viva Media GmbH, Stralauer Allee 6, 10245 Berlin, Germany (opponent),
represented by Maucher Jenkins, 26 Caxton Street, London SW1H 0RJ, United
Kingdom (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 13/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 752 304 is upheld for all the contested services.
2. European Union trade mark application No 15 409 873 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
Preliminary remark
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods and services of European
Union trade mark application No 15 409 873 for the word mark ‘VIVA MEDIA’. The
opposition is based on European Union trade mark registration No 5 062 039 for the
word mark ‘VIVA’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.
Since Article 8(5) EUTMR was withdrawn as a basis of the opposition in the
opponent’s letter dated 19/12/2016, the opposition will proceed only on the basis of
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
Decision on Opposition No B 2 752 304 page: 2 of 5
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.
a) The services
The services on which the opposition is based are, inter alia, the following:
Class 35: Publicity; advertisement and sales promotion; advertisement mediation;
business management, also for the benefit of commercial broadcasting
companies; distribution of advertising and promotional material, among
with samples; provision of advertisement space in different kinds of media,
in particular television, radio, papers, periodicals, magazines and
electronic media; marketing; market research and analysis; organizing,
arranging and conducting of shows and exhibitions for commercial and
publicity purposes; commercial intermediary in the sale of film-, music-,
sport-, video- and entertainment services and radio- and television
programs; all aforementioned services also provided via a global computer
network; production of television commercials; subscription to a television
channel; television advertising; computerized online ordering featuring
general merchandise and general consumer goods; business
merchandising display services; management and compilation of
computerised databases; compilation and systemization of information into
computer databases; conducting of voting and opinion polls through a
wireless communication device, all aforementioned services not in
connection with or regarding stoneware, ceramic coverings, tiles, floor and
wall coverings, building materials and accessories for the laying of the
afore mentioned goods.
The contested services are, after the partial rejection of the EUTMA in the course of
opposition proceedings No B 2 751 652, the following:
Class 35: Data processing.
The contested data processing consists in the collection and manipulation of items of
data to produce meaningful information. Thus, it is considered that it includes as a
broader category or overlaps with the opponent’s management and compilation of
computerised databases in Class 35, the latter consisting in the development and
execution of architectures, policies, practices and procedures that properly manage
the full data lifecycle needs of an enterprise. Since the Opposition Division cannot
dissect ex officio the broad category of the contested services, they are considered
identical to the opponent’s services.
b) 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 services found to be identical are directed at the public at
large and to a specialised ensemble of business customers with specific professional
knowledge or expertise in the IT field. The degree of attention will vary from normal to
Decision on Opposition No B 2 752 304 page: 3 of 5
high according to the services concerned, depending on the price, specialised nature
and the frequency of ‘purchase’.
c) The signs
VIVA VIVA MEDIA
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 common element ‘VIVA’ is used, by at least part of the relevant public, such as,
inter alia, the Spanish part of the public, to express approval or support, meaning
‘long live!’ (see Collins English Dictionary online). For the remaining part of the
relevant public this element is meaningless. In any case, its distinctiveness should be
seen as normal in relation to the services at stake.
The term ‘MEDIA’ of the contested sign will be understood, by at least part of the
relevant public, such as, inter alia, the English-speaking public, as ‘a plural of
medium’ (medium meaning ‘a means or agency for communicating or diffusing
information, news, etc., to the public’) or ‘the means of communication that reach
large numbers of people, such as television, newspapers, and radio’ (see Collins
English Dictionary online). Thus, for this part of the relevant public, the
distinctiveness of this element might be reduced, as it alludes to the purpose of the
services. Therefore, for part of the relevant public, its impact is limited when
assessing the likelihood of confusion between the marks at issue. Nonetheless, for
another part of the relevant public, it cannot be dismissed that this element has no
meaning and thus its distinctiveness should be seen as normal.
Visually and aurally, the signs coincide in the word/sound of ‘VIVA’ which not only
forms the whole earlier mark, but also is 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’, which is considered rather weak in relation to the
services concerned, at least by a part of the relevant public and, therefore, it has a
limited impact on 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.
Decision on Opposition No B 2 752 304 page: 4 of 5
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. For the part of the relevant public that understands
the meaning of the common element ‘VIVA’, the signs are similar at least to a high
degree, thus taking into account the rather weak distinctiveness of the additional
element of the contested sign, namely ‘MEDIA’, if understood. For the remaining part
of the relevant public that will perceive the marks as meaningless, the conceptual
comparison is not possible. Thus the conceptual aspect does not influence the
assessment of the similarity of the signs.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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 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.
e) 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.
As it has been concluded, the services under comparison are identical. 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 either similar to at
least a high degree or the conceptual aspect will not influence the assessment of the
similarity of the signs. 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
Decision on Opposition No B 2 752 304 page: 5 of 5
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 services provided by the same undertaking or
from connected entities.
In light of the above, the opposition is well-founded on the basis of the opponent’s
European Union trade mark registration No 5 062 039. It follows that the contested
trade mark must be rejected for all the contested services.
COSTS
According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Eva Inés PÉREZ
SANTONJA
Klaudia MISZTAL Chantal VAN RIEL
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.