Judgments nº T-273/16 of Tribunal General de la Unión Europea, January 16, 2018

• Resolution Date: January 16, 2018
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-273/16

(EU trade mark - Opposition proceedings - Application for EU word mark METAPORN - Earlier EU and national word marks META4 and figurative marks meta4 - Relative ground for refusal - Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) - Similarity of the services - Meaning of complementary services - Similarity of the signs - Likelihood of confusion)

In Case T-273/16,

Sun Media Ltd, established in Hong Kong (China), represented by A. Schnider, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by S. Bonne, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Meta4 Spain, SA, established in Las Rozas (Spain), represented by I. Temiño Ceniceros, lawyer,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 3 March 2016 (Joined Cases R 653/2015-2 and R 674/2015-2) relating to opposition proceedings between Meta4 Spain and Sun Media,

THE GENERAL COURT (Third Chamber),

composed of S. Frimodt Nielsen, President, I.S. Forrester (Rapporteur) and E. Perillo, Judges,

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Court Registry on 30 May 2016,

having regard to the response of EUIPO lodged at the Court Registry on 11 August 2016,

having regard to the response of the intervener lodged at the Court Registry on 11 August 2016,

further to the hearing on 4 July 2017,

gives the following

Judgment

Background to the dispute

1 On 16 May 2013, the applicant, Sun Media Ltd, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2 Registration as a mark was sought for the word sign METAPORN.

3 The services in respect of which registration was sought are, inter alia, in Classes 35, 38, 41 and 42 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

- Class 35: ‘Promotional services, limited to the promotion of online third-party offers of adult entertainment, especially images, videos and sound-recordings, on the internet and other computer and communication networks, in particular on a website; promoting such third-party offers especially by public display of hyperlinks, especially of hyperlinks in the form of thumbnails or banners, on the internet and other computer and communication networks, in particular on a website’;

- Class 38: ‘Enabling computer users to access data of any kind and respective hyperlinks via the internet and other computer and communication networks’;

- Class 41: ‘Adult entertainment services, especially electronic and online adult entertainment services; public display of adult entertainment content, especially images, videos and sound-recordings, on the internet and other computer and communication networks, in particular on a website; public display of hyperlinks, especially of hyperlinks in the form of thumbnails, to adult entertainment content on the internet and other computer and communication networks, in particular on a website;’

- Class 42: ‘Hosting adult entertainment content, especially images, videos and sound-recordings, for others, especially on the internet and other computer and communication networks, in particular on a website; Aggregation of adult entertainment content, especially images, videos and sound-recordings, on the internet and other computer and communication networks, in particular on a website; enabling computer users to update, manipulate, modify, organise, store, back up, synchronise, transmit and share data of any kind and respective hyperlinks via the internet and other computer and communication networks’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 122/2013 of 2 July 2013.

5 On 25 September 2013, the intervener, Meta4 Spain SA, filed a notice of opposition to registration of the mark applied for in respect of the services referred to in paragraph 3 above, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001).

6 The opposition was based on the following earlier marks:

- EU word mark No 8 335 606 META4 filed on 2 June 2009 and registered on 12 January 2010, covering, inter alia, services in Classes 35 and 38 and corresponding, for each of those classes, to the following description:

- Class 35: ‘Advertising; Business management; Business administration; Office functions; information and advice on human resources and personnel; assistance to businesses relating to human resources organisation and management; payroll preparation and providing external human resource department services; salary data processing, salary calculation, human resource management data processing; retailing in shops and via global computer networks of computer goods and software’;

- Class 38: ‘Telecommunications; communications by computer terminals, computer-aided transmission of messages and images, electronic mail, information about telecommunications, rental of telecommunications apparatus, radio communications, telephone and telegraphic communications, communications by fibre optic networks, rental of access time to a computer for data processing, rental of access time to a computer database; telecommunications services providing access to information on human resources, transmission of information on internet networks, in particular in the field of human resources, personnel recruitment and job seeking’;

- EU word mark No 1 262 856 META4 filed on 2 August 1999 and registered on 10 September 2002, covering, inter alia, services in Class 42 and corresponding to the following description: ‘Computer programming; design and upgrading of computer software and computers; computer engineering and consultancy; legal services’;

- EU figurative mark No 1 669 720 filed on 22 May 2000 and registered on 15 April 2002 covering, inter alia, the services ‘Telecommunications; communication by computer terminals; computer-aided transmission of messages and images; electronic mail; information about telecommunications; rental of telecommunications apparatus; radio broadcasting; communications by telephone, by telegram; communications by optical fibre networks’ in Class 38 and the services ‘Computer rental; leasing access time to a computer for data processing; leasing access time to a computer database; reconstruction of databases; consultancy in the field of computers; computer systems analysis; computer software design and rental; updating of computer software; computer programming’ in Class 42, as reproduced below:

;

- Spanish word mark No 2 878 485 META4 filed on 2 June 2009 and registered on 13 October 2009, covering, inter alia, services in Class 35 and corresponding to the following description: ‘Advertising; business management; business administration; office functions; business organisation and management consulting; business management; business inquiries; arranging of exhibitions for commercial and advertising purposes; payroll preparation and providing external human resource department services; payroll data processing; salary calculation; human resource management data processing; wholesaling, retailing in shops and via global computer networks of computer-related goods and software; subscription to telecommunication services; business advice and information to consumers; human resource consulting; data searches in computerised files for others; computerised-file management; compilation of information from a central computer; systematisation of data in a central computer’;

- Spanish figurative mark No 2 715 485 filed on 6 June 2006 and registered on 14 November 2006, covering the services ‘Advertising; commercial business management; administration of businesses; office functions; professional business consultancy; business management consulting; business organisation and management consulting; business inquiries; arranging of exhibitions for commercial or advertising purposes; retailing in shops and via global computer networks of computer software, hardware and computer-related goods; compilation of information from a central computer; systematisation of data on a central computer; data searches in computerised files for others; computerised-file management’ in Class 35 and the services ‘Providing of education; providing of training; entertainment; cultural and sporting activities; arranging and conducting of colloquiums, conferences, congresses, seminars and symposiums; organisation of exhibitions for educational or cultural purposes’ in Class 41, as reproduced below:

;

- the unregistered Spanish word mark META4, well known in Spain for services corresponding to the following description: ‘Advertising; business management; business administration; office functions; human resource and personnel services, information and advice; assistance to businesses relating to human resources organisation and management; payroll preparation and providing external human resource department services; salary data processing, salary calculation, human resource management data processing; retailing in shops and via global computer networks of computer goods and software’.

7 The grounds relied on in support of the opposition were those laid down in Article 8(1)(b) and (2)(c) of Regulation No 207/2009 (now Article 8(1)(b) and (2) of Regulation 2017/1001).

8 On 4 February 2015, the Opposition Division upheld the opposition in part. It thus refused to register...