OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
Opposition Division
OPPOSITION No. B 1 621 179
Recoletos Grupo de Comunicación, S.A., Paseo de la Castellana, 66-5°, 28046
Madrid, Spain (opponent), represented by Herrero & Asociados, Alcalá, 35, 28014
Madrid, Spain
against
Kama Beverages AG, Baarerstr. 16, 6300 Zug, Switzerland (applicant), represented
by Höhne, In der Maur & Partner Rechtsanwälte GmbH, Mariahilfer Str. 20, 1070
Wien, Austria.
On 28/02/2011, the Opposition Division takes the following
DECISION:
1.
Opposition number B 1 621 179 is rejected in its entirety.
2.
The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods in class 16 of Community
trade mark application No 8 566 721, based on inter alia Spanish trade mark
registrations No 2 454 104, No 2 454 107 and No 2 753 733. The opponent invoked
Article 8(1)(b) and 8(5) CTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR
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.
a) The goods
The goods on which the opposition is based are the following:
ES No 2 454 104 and ES No 2 454 107:
Class 16:
Paper, cardboard and goods made from these materials, not included
in other classes; printed matter; bookbinding material; photographs;
stationery; adhesives for stationery for household purposes; artists’
materials; paint brushes; typewriters and office requisites (except
furniture); instructional and teaching material (except apparatus);
Decision on Opposition No B 1 621 179
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plastic materials for packaging (not included in other classes); printer’s
type; printing blocks; publications, magazines, books.
ES No 2 753 733:
Class 16:
Paper, cardboard and goods made from these materials not included
in other classes; printed matter; bookbinding material; photographs;
stationery; adhesives for stationery for 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); printer’s
type; printing blocks; publications, magazines, books, diaries and
calendars.
The contested goods are the following:
Class 16:
Paper, cardboard and goods made from these materials, not included
in other classes; printed matter; bookbinding material; photographs;
stationery;artists' material; plastic materials for packaging (not
included in other classes); printers' type; printing blocks;display cards,
beer mats, blocks, correspondence note paper, brochures, offices
requisites, comic books, flags and pennants (of paper), bottle
envelopes of cardboard or paper, calendars, paper bows, table
napkins of paper, paper bags, posters, advertising boards of paper
and cardboard, boxes of paper or cardboard, signboards of paper or
cardboard, desk pads, stamps, table linen of paper, packaging paper,
blackboards, periodicals, newspapers.
The terms paper, cardboard and goods made from these materials, not included in
other classes; printed matter; bookbinding material; photographs; stationery;artists'
material; plastic materials for packaging (not included in other classes); printers' type;
printing blocks; offices requisites are contained in both the earlier and contested
specifications; hence they are identical.
The remaining contested goods display cards, beer mats, blocks, correspondence
note paper, brochures, comic books, flags and pennants (of paper), bottle envelopes
of cardboard or paper, calendars, paper bows, table napkins of paper, paper bags,
posters, advertising boards of paper and cardboard, boxes of paper or cardboard,
signboards of paper or cardboard, desk pads, stamps, table linen of paper,
packaging paper, blackboards, periodicals, newspapers are covered by the earlier
goods paper, cardboard and goods made from these materials, not included in other
classes; printed matter. The goods are therefore identical.
Decision on Opposition No B 1 621 179
page : 3 of 11
b) The signs
ES No 2 454 104:
ES No 2 454 107:
ES No 2 753 833:
Earlier trade mark
Contested sign
The relevant territory is Spain.
All the earlier marks contain the same shaped uppercase letter M. The design of the
M is quite slim and tall. The bottom parts of the feet are extended horizontally, with
the impression that the M rests on two columns. Similarly, the top parts of the M
extend similarly horizontally. ES No 2 753 833 exclusively comprises this letter in the
colour red. ES No 2 454 104 consist of the letter M in red with a thin grey frame
surrounding it. The verbal element MARCA is placed underneath it in much smaller
standard red uppercase letters. The letter ‘M’ in MARCA is the same as the larger M.
ES No 2 454 107 contains the letter M in red with the verbal element MARCA in the
same font as in ES No 2 454 104 in white and placed inside the bottom part of the
right foot of the letter M.
Decision on Opposition No B 1 621 179
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The contested sign is a figurative mark containing a simple and broad uppercase
letter M with the words MAGNA and VITA placed in uppercase letters in the middle of
it. MAGNA is the larger of two and is placed on top of VITA.
Visually, all the marks contain an uppercase letter M. However, the specific design
of the Ms is different, with the contested M extending horizontally, the earlier Ms
extending vertically. The result of this is that while the contested M appears a bit fat,
the earlier Ms is slimmer and taller. The earlier Ms are due to their column-like
elements somewhat stylised, whereas the contested M is more simple. Furthermore,
the contested mark contains the verbal element MAGNA VITA, whilst the earlier
marks ES No 2 454 104 and ES No 2 454 107 contain the verbal element MARCA.
Isolated from the overall design of the marks, MARCA and MAGNA share some
similarities, namely the letters MA and A. However, these similarities are
overshadowed by the design and placement of these verbal elements, which are
different. MAGNA VITA is placed inside the middle of the letter M in the contested
sign, MARCA either underneath or in the right column of the letter M. The placement
of these verbal elements, and in particular MAGNA VITA in the middle of the letter M
in the contested sign, detracts attention from the letter M, thus reducing the overall
impression of similarity between the signs. Taking into consideration the designs of
the marks, in particular the placement and stylisation of the verbal elements MAGNA
VITA and MARCA as well as that the letters M are quite different, the Opposition
Division finds that since the marks share the letter M they also share some visual
similarities.
Aurally, the various elements of the contested sign will be pronounced ‘E/ME’ and
‘MAG/NA/VI/TA’. The various elements of the earlier marks ES No 2 454 104 and ES
No 2 454 107 will be pronounced as ‘E/ME’ and ‘MAR/CA’, while the earlier mark ES
No 2 753 833 will be pronounced as ‘E/ME’. Consequently, there are aural
similarities to the extent the letter M in the marks will be pronounced, as well as there
being certain aural similarities between MARCA and MAGNA, both being bi-syllabic
words beginning with MA and ending with A.
Conceptually, the letter M has no meaning. MARCA means inter alia ‘sign’, ‘mark’,
‘trade mark’ or ‘trace’.
MAGNA is, as stated by the applicant, a common prefix and an adjective for something
‘big’ or ‘magnificent’. In Latin VITA means ‘life’. The corresponding word in Spanish is
‘vida’, which only differs in one letter from VITA. Also the adjective ‘vital’ derives from
the Latin VITA, as does other words relating to life such as for example ‘vitalidad’ and
‘vitalicio’; consequently the Spanish public will understand VITA as ‘life’, with the result
that MAGNA VITA will be perceived as big or magnificent life.
Consequently, due to the concepts of MARCA and MAGNA VITA, the marks are
conceptually dissimilar.
In respect of the earlier registration ES No 2 753 833 M, the marks are not conceptually
similar as the single letter M does not have any concept, whereas MAGNA VITA does .
c) Distinctive and dominant elements of the signs
In determining the existence of likelihood of confusion, the comparison of the
conflicting signs must be based on the overall impression given by the marks,
bearing in mind, in particular, their distinctive and dominant components.
Decision on Opposition No B 1 621 179
page : 5 of 11
The earlier mark ES No 2 753 833 has no element which could be considered clearly
more distinctive or dominant (visually eye-catching) as it only comprises the letter M.
The letter M is the visually dominant element of the earlier marks ES No 2 454 104
and ES No 2 454 107 but, as correctly pointed out by the applicant, single letters in
ordinary typeface are generally not considered distinctive. The design of the letter M
of the earlier marks is in this respect at best borderline as to the question whether it
is ordinary or simply slightly stylised. Consequently, because it does not have a
meaning in relation to the goods MARCA is the most distinctive element per se of
these earlier marks.
In the contested sign, the letter M is clearly the largest element. However, its impact
is obscured by the verbal element MAGNA VITA placed inside it in white, with the
result that MAGNA VITA is the predominant visual element. As mentioned, single
letters as such are not considered distinctive and the design of the letter M in the
contested sign is even less fanciful than in the earlier marks; hence it is not
considered to have any distinctiveness per se. The distinctiveness of MAGNA per se
is of limited scope as it indicates a quality. Still the distinctiveness of the contested
sign lies in the combination MAGNA VITA.
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.
According to the opponent the earlier trade marks have a reputation in Spain in
connection with for the goods they are registered for. Such claim must be properly
considered given that the distinctiveness of the earlier trade mark must be taken into
account in the assessment of likelihood of confusion. Indeed, the more distinctive the
earlier mark, the greater will be the likelihood of confusion (see judgment of
11/11/1997, C-251/95, ‘Sabel’), and therefore marks with a highly distinctive
character, either per se or because of the recognition they possess on the market,
enjoy broader protection than marks with a less distinctive character (see judgment
of 29/09/1998, C-39/97, ‘Canon’).
The opponent filed, in particular, the following evidence:
The opponent’s Annual Report from 2000. In the section Sports, the report states
that ‘Marca enjoys the widest circulation of any sports newspaper and the highest
average daily readership in Spain (…).During 2000 Marca’s circulation increased
to a daily average of 403 049 copies (…). According to EGM the accumulated
readership during 2000 was 2.25 million, a market share of 60.4%’. A pie chart
shows that the cited market share relates to sports dailies. Furthermore, the
report speaks about the expansion of MARCA into other online and multimedia.
A report for MARCA from 2004 issued by the opponent showing the logo
on the front page.and a letter M on each page. MARCA ranks as number one
among newspapers, with a total of more than 2 million readers. Its readership
shares among sports dailies is 57.3%, and clearly the market leader.
A corporate brochure issued by the opponent from 2000 called ‘Marca No 1 De
Todo La Prensa’ (‘Marca No 1 in the Press’) confirming the figures in the report
from 2004. It refers to the market leadership of MARCA in relation both to sports
Decision on Opposition No B 1 621 179
page : 6 of 11
newspapers and in the general newspaper category with 2 256 000 readers a
day.and a market share of 60.4% for sports newspapers.
Certificates issued by the Secretary Generals of the Chamber of Commerce,
Industry and Navigation of Madrid, Bilbao, Valencia, Barcelona, La Coruña and
Seville between 2004 each stating that the trademark MARCA is famous within
each market within the publishing and communications sector.
A printout dated 27/02/2007 from the webpage of OJD (Oficina de Justificación
de la Difusión – Office for the Justification of Circulation) responsible for the
realisation and verification of the circulation figures of publications whose copies
are sold to third parties through different channels. The circulation numbers from
1994 to June 2006 generally tend to be close to 500 000.
A printout of 27/02/2007 from the webpage CIAO! containing different positivt
comments on the newspaper MARCA..
Copies of two judgments by a tribunal of the High Court of Justice of Madrid from
2008 and 2009 which inter alia admits to the fame of MARCA. The first judgment
states that ‘To this we must add the fame of one of the opposing “MARCA”
trademarks (…)’, the second judgment states that ‘And in the case at hand it
cannot be disputed that the distinctive MARCA is famous with the sports written
press sector (…)’.
A sworn declaration from Ms Ana Isabel Rivas Boyero acting in her capacity as
Administration and Finance Director of the opponent’s parent company indicating
the substantial turnover figures for the company for 2008 and 2009.
A summary of important sports events organised and sponsored by the MARCA
newspaper during 2007 – 2009. It shows mostly use of the logo
but also some stands featuring the logo
fewer stands with the elements
, and some
underneath the heading MARCA or
simply
alone. The various sponsorship events referred to pertain to
basketball (NBA), racing (Formula 1), football, bicycling, tennis (Madrid Open) in
inter alia Madrid, Valencia and Seville.
Samples of frequent promotions carried out by the MARCA newspapers for DVD
players, mp3 speakers, promotional clothing, decoders, cameras, books showing
some use inter alia of
and
as well as
.
Copies of agreements relating to the promotion and organisation by MARCA, and
advertising of MARCA in relation to a tennis tournament in Madrid as well as an
agreement regarding the exploitation of the US basketball league, the NBA, all
relating to the period 2009 - 2011.
An audit report for 2008 by Ernst & Young of the parent company of the
opponent and a copy of the Annual Accounts and Management Report of the
parent company of the opponent for 2009 in both of which MARCA is described
as one of the mastheads of the group.
Samples of MARCA newspaper editions published in the period 2003 – 2004 and
in 2007 and 2009 containing information on awards received by MARCA. It
Decision on Opposition No B 1 621 179
essentially shows use of the marks
page : 7 of 11
and
. To a
, which seems to have
somewhat lesser extent the evidence indicate use of
been put regularly on the top of each page at least from 2007..
A study published by the opponent’s parent company concerning the circulation
and readership of MARCA from July 2003 until June 2009. The results are
indicated as having been made by third party analysts (OJD, EGM,
MillwardBrown). Some of the figures indicate MARCA as the market leader for
sports dailies with a circulation around 300 000 pr. issue each year with a
readership consistently above 2.5 million readers. Consistently, MARCA is
indicated as market leader. Regarding spontaneous recognition first mentioned
MARCA is the leader with 55%, and with spontaneous recognition total mention,
MARCA is also market leader with 95%.
The evidence clearly indicates that MARCA has a high degree reputation in Spain for
newspapers. It is the leading sports paper in Spain, with a market percentage
consistently around 50 – 60% between 2000 and 2009. The numbers largely derive
from evidence produced by the opponent, however some of it stems from annual
reports, which presumably are quite reliable. They concern public information which
is important for third parties such as e.g. the stock market and clients. Furthermore,
they are also supported by evidence from independent sources, such as e.g. the
certificates of the Chamber of Commerce from the largest Spanish cities, the excerpt
from OJD concerning the circulation numbers of MARCA, the two judgments from
the High Court of Justice from Madrid, the audit report from Ernst & Young as well as
the fact that the opponent has been sponsoring major sports events in Spain,
thereby having creating great exposure of MARCA to the Spanish public.
The evidence furthermore clearly indicates that MARCA and
are
the primary designations of the opponent, and that the reputation primarily relates to
this name.
ES No 2 454 104 and ES No 2 454 107:
Both ES No 2 454 104 and Es No 2 454 107 contain the term MARCA, although the
letter M is the most visually prominent element. However, taking into account the
reputation of
, the Opposition Division finds that the evidence of
reputation also must apply to these registrations as well.
ES No 2 753 833:
It is less clear whether the evidence is sufficient for finding a reputation for ES No 2
753 833
, since the primary designation of the opponent is
.
This registration is depicted used in some of the sponsorship events together with
. From the excerpts from the newspaper, it also seems that at least
from sometime in 2007, the letter M was used consistently on the top of each page of
the newspaper. Furthermore, the design of the letter is the same as in the reputed
mark
; hence the reputation of this sign also spills over when
Decision on Opposition No B 1 621 179
page : 8 of 11
assessing the reputation of the letter M. Although single letters are regarded as
meaningless in themselves, the evidence on file strongly suggests that the letter ‘M’
of the earlier mark will not only be perceived as a meaningless ‘M’, but rather as the
‘MARCA M’. In this respect the Opposition Division finds that there is a reputation as
well for this registration.
Conclusion:
In conclusion, the Opposition Division finds that due in particular to the use of the
sign
2 454 107
, the two earlier registrations ES No 2 454 104
and ES No
share a similar degree of recognition.
is reputed for
The Opposition Division also finds that ES No 2 753 833
newspapers, although it is likely that the public recognition of this mark is lower than
in respect of the earlier marks containing the word MARCA.
e) Relevant public – level 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 level of attention is likely to vary
according to the category of goods or services in question.
In the case at hand, the goods are directed at the public at large.
f) Global assessment, other arguments and conclusion
The marks have been found to possess certain visual and aural similarities, though
being conceptually dissimilar or non similar and they cover identical goods. The
earlier marks have been found to have reputation through use to different extents.
The aural similarities lie in the possibility of the earlier marks and the contested sign
containing pronunciation of the letter ‘M’ as well as the similarities between MARCA
and MAGNA. Due to the placement of the verbal elements MAGNA VITA on top of
the letter M in the contested sign, thereby overshadowing the letter M, the Opposition
Division finds it unlikely that this letter will be pronounced. Similarly, in ES No 2 454
104 and ES No 2 454 107 the letter M will be perceived as a reference to the term
MARCA, with the ensuing result that it is not likely to be pronounced.
As to the aural similarity between MARCA and MAGNA VITA, although the initial
elements MA and the final sound A in MARCA and MAGNA are identical, the sounds
produced by the combinations RC and GN inside the words are very different.
Furthermore, MARCA and MAGNA are quite short, with the result that minor
differences easily alter the overall impression. Therefore, although there are some
similarities between MARCA and MAGNA, overall they are not aurally similar since
the dissimilarities overshadow the similarities.
Decision on Opposition No B 1 621 179
page : 9 of 11
Visually, the marks both contain an uppercase letter M which has been designed
differently. Also, the contested sign contains the visually prominent element MAGNA
VITA, which overshadows the M. Therefore, overall, the visual similarity is in itself
considered insufficient.
As a result of the above, and even taking into consideration the reputation of the
earlier marks, the Opposition Division finds that there is no likelihood of confusion on
part of the public under Article 8(1)(b) CTMR.
The opponent has also claimed that it has three well-known marks under Article
8(2)(c) CTMR in conjunction with Article 8(1)(b) CTMR. The claimed well-known
marks are the same as the registered marks already examined and for the same
goods in class 16; consequently, even if assuming that the opponent has established
these well-known marks in Spain under Article 8(2)(c), there would be no likelihood
of confusion under Article 8(1)(b) CTMR in respect of these earlier rights as the
assessment would be the same as the one already undertaken above
REPUTATION – ARTICLE 8(5) CTMR
According to Article 8(5) CTMR upon opposition by the proprietor of an earlier trade
mark within the meaning of Article 8(2) CTMR, the contested trade mark shall not be
registered where it is identical with, or similar to, the earlier trade mark and is to be
registered for goods or services which are not similar to those for which the earlier
trade mark is registered, where, in the case of an earlier Community trade mark, the
trade mark has a reputation in the Community and, in the case of an earlier national
trade mark, the trade mark has a reputation in the Member State concerned and
where the use without due cause of the contested trade mark would take unfair
advantage of, or be detrimental to, the distinctive character or the repute of the
earlier trade mark.
It follows from the above that the grounds of refusal of Article 8(5) CTMR are only
applicable when the following conditions are met:
a) The signs in conflict must be either identical or similar.
b) The opponent’s trade mark must have a reputation. The reputation must also
be prior to the contested trade mark; it must exist in the territory concerned
and in connection to the goods and/or services on the basis of which the
opposition was entered.
c) Encroachment upon reputation: the use of the contested trade mark would
take unfair advantage of, or be detrimental to, the distinctive character or the
repute of the earlier trade mark.
The above mentioned requirements are cumulative and therefore the absence of any
of them leads to the rejection of the opposition under Article 8(5) CTMR. It should be
noted, however, that the fulfilment of all the above mentioned conditions may not be
sufficient. Indeed, the opposition may still fail if the applicant establishes a due cause
for the use of the contested trade mark.
As to the similarity of the signs and the reputation of the earlier marks, reference is
made to the relevant parts of this decision.
Decision on Opposition No B 1 621 179
page : 10 of 11
Concerning encroachment upon reputation, the use of the contested trade mark may
only take advantage from, or be detrimental to, the distinctive character or repute of
the earlier trade mark if there is a certain degree of similarity between the earlier and
later marks, by virtue of which the relevant section of the public makes a connection
between those two marks, that is to say, establishes a link between them.
The opponent has quoted the guidelines of the Office, and concluded that due to the
existence of a sufficient level of awareness of the distinctive letter ‘M’ of the opposing
trade marks, the Spanish public, when faced with the contested trade mark in which
the letter ‘M’ is also prominent in large size and with a very similar characteristic
design, could rationally associate the business origin of all these trade mark, with the
result being a clear detriment to the fame and elevated distinctiveness of the
opposing trade marks. It also states that it is rational to believe that the applicant has
been greatly tempted to register a trade mark with the same letter ‘M’ with a
characteristic design as its distinctive and dominant element, so as to attempt to
benefit from the fact that the public will associate said letter with a particular source
of origin.
The opponent exaggerates the similarities between the marks. As previously
elaborated, the design of the earlier and contested Ms contains significant
differences. The inherent distinctiveness of the letter M in the earlier marks is, at the
very best, borderline and the use of a single uppercase letter such as the letter M is
not at all unique. On top of this, the most important part of the contested sign is not
the letter M, but the verbal element MAGNA VITA. As seen previously, the similarity
between MARCA and MAGNA VITA is also very limited due to the conceptual
dissimilarities, the different visual designs and the differences created by the letters
RC and GN on the overall impression of the words.
Thus, in view of the above mentioned differences between the marks, the similarities
that the contested trade mark present with the earlier trade mark are unlikely to bring
the earlier trade mark to the minds of the average consumer, even assuming the
presence of reputation and identical goods.
As there is no association, there cannot be any detriment or unfair advantage as the
relevant public will not make a link between the marks.
Consequently, the claims under Article 8(5) CTMR must be rejected.
Decision on Opposition No B 1 621 179
page : 11 of 11
COSTS AND FIXING OF COSTS
According to Article 85(1) CTMR, 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 (7)(d)(ii) CTMIR, 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.
The Opposition Division
Natascha Semjevski
Thomas Hvammen
Nicholson
Mira Rajh
Under Article 59 CTMR any party adversely affected by this decision has a right to
appeal against this decision. Under Article 60 CTMR notice of appeal must be filed in
writing at the Office within two months from the date of notification of this decision
and within four months from the same date a written statement of the grounds of
appeal must be filed. The notice of appeal will be deemed to be filed only when the
appeal fee of EUR 800 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. Under Rule 94(4) CTMIR 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
(Article 2(30) CTMFR) has been paid.