CELEX: 62016TJ0262
EU trade mark
Opposition proceedings
Application for EU word mark GLOBO MEDIA
Earlier national figurative mark TV GLOBO PORTUGAL
Relative ground for refusal
Likelihood of confusion
Article 8(1)(b) of Regulation (EC) No 207/2009

Background to the dispute
On 16 March 2010, the applicant, Globo Media, SA, 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).
The trade mark for which registration was sought is the word sign GLOBO MEDIA.
The goods and services for which registration was sought come within Classes 9, 16, 35, 38, 39 and 41 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 9: ‘Electronic publications (electronically-downloadable); records; compact discs (audio-video); optical disks; phonographic records; compacts discs; DVDs; magnetic tapes; cassettes; floppy disks and other recorded elements for the reproduction of sound or images; exposed films, in particular video films; editing appliances for cinematographic films; apparatus and carriers for recording, processing, transmission and reproduction of data, sound or images’;
–        Class 16: ‘Publications; books; magazines; 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 35: ‘Advertisement services; publicity agencies; radio and television advertising; rental of advertising space; rental of advertising material; dissemination of advertisements; advertising promotions; organisation of exhibitions for commercial and publicity purposes; publication of publicity texts; business management; business administration’;
–        Class 38: ‘Broadcasting of radio and television programmes; radio broadcasting services; cable television broadcasting; satellite transmission; press information services; news agencies; telecommunications services’;
–        Class 39: ‘Distribution, transport and storage of all kinds of audiovisual goods’;
–        Class 41: ‘Production of radio and television programmes; organisation of shows (theatrical booking agencies); production of shows; screenplay editing; entertainer services; news reporter services; recording studio services; record publishing; show scenery (rental of); rental of theatre or television studio lighting apparatus; rental of audio equipment; rental of movie projectors and accessories; music competition services; orchestra services; entertainment services; publication of texts (other than publicity texts); educational, training and teaching services’.
The EU trade mark application was published in
European Union Trade Marks
Bulletin No 2010/069 of 19 April 2010.
On 19 July 2010, Globo Comunicação e Participações S/A filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of all the goods and services referred to in paragraph 3 above, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
The opposition was based on, inter alia, the earlier Portuguese figurative mark reproduced below, which was registered on 31 January 2008 under number 422855 and applied for on 22 October 2007 in respect of, inter alia, the services covered by Class 41: ‘Television production, television programmes, information programmes and info shows; entertainment; entertainment shows for television, including television series and programmes, particularly in the area of news, series, sports and variety shows’:
On 19 December 2013, the Opposition Division partially upheld the opposition, refusing to register the mark applied for in respect of certain services covered by Class 35 and of the services covered by Classes 38 and 41 on the ground that there was a likelihood of confusion between the mark applied for and the earlier mark in respect of those services.
On 18 February 2014, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division, in so far as that decision had partially upheld the opposition and refused the application for registration in respect of certain services in Class 35 and of the services in Classes 38 and 41.
By decision of 14 March 2016 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. In particular, it took the view that the services relevant to the present application were at least similar to those protected by the earlier trade mark and that the signs at issue were visually similar to a low degree, phonetically similar to a medium degree and conceptually similar to a high degree. It accordingly concluded that there was likelihood of confusion in respect of the services in question, even for the relevant public with a high level of attention.

Forms of order sought
The applicant claims that the Court should:
–        annul the contested decision;
–        reject the opposition and grant registration of the contested mark in respect of the relevant services;
–        order EUIPO to pay the costs.
EUIPO contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.

Law

Whether the request that registration of the mark be granted is admissible
The applicant’s second head of claim must be construed as requesting, first, that the Court reject the opposition brought by Globo Comunicação e Participações and, second, that it grant registration of the contested mark in respect of the relevant services.
In this regard, it follows from settled case-law that, in an action before the Courts of the European Union against the decision of a Board of Appeal of EUIPO, EUIPO is required, pursuant to Article 65(6) of Regulation No 207/2009, to take the measures necessary to comply with judgments of the Courts of the European Union. It is therefore not for the General Court to issue directions to EUIPO, but for EUIPO to draw the appropriate inferences from the operative part and grounds of the judgments of the Courts of the European Union (see, by analogy, judgment of 11 July 2007,
El Corte Inglés
v
OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños)
, T‑443/05, EU:T:2007:219, paragraph 20 and the case-law cited).
The applicant’s second head of claim must therefore be rejected as inadmissible in so far as it requests the Court to grant the application for registration of the contested trade mark.

Substance
In support of its action for annulment, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009, the term ‘earlier trade marks’ means, inter alia, trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003,
Laboratorios RTB
v
OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS)
, T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009,
Commercy
v
OHIM — easyGroup IP Licensing (easyHotel)
, T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
It is in the light of those considerations that it is necessary to examine whether the Board of Appeal was right to conclude that the conditions for applying Article 8(1)(b) of Regulation No 207/2009 were satisfied in the present case.
As a preliminary point, it should be noted that the applicant does not dispute before the General Court the findings made by the Opposition Division and adopted by the Board of Appeal that the relevant public is the public at large and the professional public in Portugal, whose attention will vary according to the category of services. The relevant public is therefore the public at large and the professional public in Portugal.
Furthermore, the findings made by the Opposition Division and adopted by the Board of Appeal with regard to the comparison of the services in question have also not been disputed by the applicant before the Court. The Court therefore finds that the services at issue in the present case and those covered by the earlier trade mark are at least similar.
The comparison of the signs at issue
The overall assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression conveyed by those signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the overall assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007,
OHIM
v
Shaker
, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
In a case involving a composite mark, assessment of the similarity between two marks means more than taking merely one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007,
OHIM
v
Shaker
, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments of 12 June 2007,
OHIM
v
Shaker
, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007,
Nestlé
v
OHIM
, C‑193/06 P, not published, EU:C:2007:539, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression produced by that mark (judgment of 20 September 2007,
Nestlé
v
OHIM
, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
It is in the light of those principles that the signs at issue must be examined.
–        The distinctiveness and dominance of the elements comprising the signs at issue
It is apparent from paragraph 24 of the contested decision that the Board of Appeal took the view that the contested sign has no dominant element. According to the Board of Appeal, the word ‘media’ will be understood in relation to the services applied for as having a purely descriptive meaning, whereas the word ‘globo’ means ‘globe’ and the fact that none of the services applied for is for or related to globes confers on the mark a distinctive character. As regards the earlier mark, the figurative element will be perceived as an illustration of a TV or camera screen superimposed on a globe, which reinforces the word element ‘tv’ and therefore directly describes the relevant services. The Board of Appeal took the view that the word element ‘Portugal’ would be perceived as referring to the relevant territory and would therefore also be descriptive. Accordingly, and for the same reasons as mentioned above, the element ‘globo’ would be perceived as the element having the most distinctive character in the earlier sign. The signs, it was found, have that distinctive element in common and a likelihood of confusion therefore exists with respect to the services in question.
The applicant disputes the Board of Appeal’s appraisal of the dominant and distinctive elements of the earlier mark. It submits that the Board of Appeal erred in basing its assessment on a secondary element of the signs at issue, namely the word element ‘globo’, without having regard to the principal difference between them, namely the dominant figurative element of the earlier mark.
EUIPO takes issue with the applicant’s arguments.
It should be noted that the earlier trade mark is a composite mark composed of word elements and figurative elements. According to settled case-law, the former are, as a rule, more distinctive than the latter, since the average consumer will more easily refer to the services in question by citing the name rather than describing the figurative element of the mark (judgment of 20 September 2007,
Nestlé
v
OHIM
, C‑193/06 P, not published, EU:C:2007:539, paragraph 39; see also judgment of 25 May 2016,
Ice Mountain Ibiza
v
EUIPO — Marbella Atlantic Ocean Club (ocean ibiza)
, T‑6/15, not published, EU:T:2016:310, paragraph 45 and the case-law cited).
In so far as the Board of Appeal took the view that the terms ‘tv’ and ‘Portugal’ were descriptive of the services in question, as summarised in paragraph 25 above, it was fully entitled to consider that the word element ‘globo’ constitutes the most distinctive element of the earlier mark.
With regard to the appraisal of dominant character, the Court points out that the earlier mark is a composite mark including a figurative element, comprising a metallic globe inside which there is an image of a television, which, in turn, contains a lens. The applicant submits that this is an original and striking image which is made distinctive by the colours of the rainbow. However, it is in no way apparent from the evidence in the case file that the earlier mark had any colour. The earlier mark, as presented in the opposition proceedings before EUIPO, is represented in black and white. The figurative element in question is followed by the words ‘tv’ and ‘globo’ written in large stylised lettering directly below and, underneath those words, the term ‘Portugal’ is written in smaller and thinner lettering. That word element is of a size similar to that of the figurative element and the two elements occupy a similar amount of space. The applicant’s claim that the position of the figurative element within the sign and its colour give it an important role is therefore unfounded.
For the assessment of the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition, and as an incidental point, account may be taken of the relative position of the various components within the arrangement of the composite mark (judgment of 23 October 2002,
Matratzen Concord
v
OHIM — Hukla Germany (MATRATZEN)
, T‑6/01, EU:T:2002:261, paragraph 35, upheld on appeal by order of 28 April 2004,
Matratzen Concord
v
OHIM
, C‑3/03 P, EU:C:2004:233).
In so far as the figurative element is composed of essentially decorative or commonplace signs, the Board of Appeal was fully entitled to conclude that the figurative character of the sign did not affect the conclusion that the element ‘globo’ would be perceived by the relevant public as being the element having the most distinctive character in the earlier sign.
In addition, the figurative element reinforces the concept conveyed by the expression ‘tv globo’ of the mark. The figurative element is therefore also descriptive of the relevant services.
Although it is settled case-law that, as a general rule, the public will not consider a descriptive element forming part of a composite mark as the distinctive and dominant element of the overall impression conveyed by that mark, the weak distinctive character of an element of a composite mark does not necessarily imply that that element cannot constitute a dominant element, since it may, on account, in particular, of its position in the sign or its size, make an impression on consumers and be remembered by them (see judgment of 13 June 2006,
Inex
v
OHIM — Wiseman (Representation of a cowhide)
, T‑153/03, EU:T:2006:157, paragraph 32 and the case-law cited). In the present case, it cannot be concluded from the figurative element’s position in the sign or from its size that that figurative element is a dominant element.
Furthermore, the specific case-law on word elements, according to which, even if a word element should be considered to have a purely descriptive character, that character does not preclude that element from being acknowledged as dominant for the purposes of assessing the similarity of the signs at issue (see judgments of 19 March 2015,
MEGA Brands International
v
OHIM
, C‑182/14 P, EU:C:2015:187, paragraph 34 and the case-law cited, and of 16 January 2014,
Investrónica
v
OHIM — Olympus Imaging (MICRO)
, T‑149/12, not published, EU:T:2014:11, paragraph 51 and the case-law cited), does not apply to the present case because the element in question is figurative.
Accordingly, the Court finds that the public will not consider the figurative element to be dominant in the overall impression given by the composite mark. Furthermore, in those circumstances, the Board of Appeal did not commit an error of assessment in finding that the element ‘globo’ would be perceived as the element having the most distinctive character in the earlier sign.
–        The visual similarity of the signs at issue
With regard to the visual comparison, it must be pointed out that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since those two types of mark have graphic form capable of creating a visual impression (see judgment of 4 May 2005,
Chum
v
OHIM — Star TV (STAR TV)
, T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited).
The applicant relies on the overall impressions conveyed by the marks, which, it argues, differ due to the differences introduced by the figurative element of the earlier mark, which, in its opinion, dominates the overall impression conveyed by that mark. It contends that the Board of Appeal erred in assessing the level of similarity of the marks due to the exclusive importance which it attributed to the element ‘globo’. Although that element does indeed result in a certain phonetic similarity, both marks have important graphic differences at the visual level.
In the present case, the applicant claims that the image depicted has a very particular visual attraction, made distinctive by, inter alia, the use of the colours of the rainbow for the television, its large size and its position.
In that regard, the Court refers to the observations made in paragraph 30 above, according to which the earlier trade mark displayed in the opposition proceedings before EUIPO is a composite mark in black and white.
The argument that the figurative element has quite a particular visual attraction is therefore unfounded. Although it is conceivable that an image containing the colours of the rainbow may be immediately eye-catching, that is not the case with regard to an element presented in black and white.
In any event, the Court finds, as did the Board of Appeal, that the signs are visually similar only to a low degree. The signs coincide solely in the element ‘globo’ and the earlier sign contains other figurative and word elements.
The Board was therefore fully entitled to conclude that the signs were visually similar to a low degree.
–        The phonetic similarity of the signs at issue
Phonetically, the Board of Appeal acknowledges that the contested sign will be pronounced as ‘globo media’. As for the earlier sign, it considers that it is very unlikely that the word ‘Portugal’ will be pronounced at all, with the result that the sign will be pronounced as ‘tv globo’. Having regard to the presence of an element pronounced in the same manner in both signs, the Board of Appeal found them to be phonetically similar to a medium degree.
The applicant disputes that assessment. It notes that the words ‘media’ and ‘tv’ have an impact on the pronunciation of the signs such that the signs are phonetically similar only to a low degree.
The Court points out that the phonetic difference between the signs due to the presence of additional words was not disputed by the Board of Appeal. However, the Board of Appeal was right to find that, on the basis of the pronunciation of their common element ‘globo’, the signs at issue were phonetically similar to a medium degree. By reason of the fact that one of the words in the earlier mark and in the mark applied for is identical and is pronounced in the same way, there is some phonetic similarity between the two signs taken as a whole (see, by analogy, judgment of 27 September 2007,
La Mer Technology
v
OHIM — Laboratoires Goëmar (LA MER)
, T‑418/03, not published, EU:T:2007:299, paragraph 123).
The Board of Appeal was, therefore, fully entitled to find that the marks were phonetically similar to a medium degree.
–        The conceptual similarity of the signs at issue
In finding that the marks were conceptually similar to a high degree, the Board of Appeal took into account the meaning of the common element ‘globo’ (globe), the link between the concepts of ‘tv’ and ‘media’, and the fact that the figurative element merely reinforced the concepts conveyed by the word elements of the earlier mark, namely a television within a globe.
As the applicant did not dispute that finding, the Board of Appeal was fully entitled to rely on that element in the contested decision.
The likelihood of confusion
An overall assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998,
Canon
, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006,
Mast-Jägermeister
v
OHIM — Licorera Zacapaneca (VENADO with frame and others)
, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
In the contested decision, the Board of Appeal took the view that, having regard to the medium distinctive character of the earlier trade mark and to the fact that the signs at issue were visually similar to a low degree, phonetically similar to a medium degree and conceptually similar to a high degree, there was a likelihood of confusion in respect of the services in question, which were, at least, similar, even for the relevant public displaying a high level of attention.
The applicant disputes that finding, alleging, principally, that the predominance of the figurative element in the earlier mark justifies the absence of any likelihood of confusion. Furthermore, the applicant submits that the significance of the various aspects of similarity between signs varies according to the goods and services in question, such that, in the sector relating to the broadcasting and production of television programmes, for example, the visual aspect plays a more prominent role in the overall assessment of the likelihood of confusion than in other sectors. According to the applicant, it follows that the degree of similarity between the marks at issue is not sufficiently high as to lead to a finding that there is a likelihood of confusion for the relevant public.
The Court reiterates that the Board of Appeal acted correctly in taking the view that the earlier trade mark was of medium distinctive character, in the light of its figurative configuration as described above and in the light of the fact that the element ‘globo’ is not, per se, descriptive of anything but a globe and, at most, alludes to the planet.
The Board of Appeal was also entitled to find that the signs at issue were visually similar to a low degree, phonetically similar to a medium degree and conceptually similar to a high degree, as the Court has found in paragraphs 22 to 49 above.
With regard to the applicant’s argument that there is no likelihood of confusion owing to the predominance of the figurative element in the earlier mark, it should be borne in mind that, in the context of the overall assessment of the likelihood of confusion, the average consumer has only occasionally the opportunity to carry out a direct comparison of the various trade marks but must rely on his imperfect mental image of them. It should also be borne in mind that the average consumer’s level of attention is liable to vary according to the category of goods or services in question (see, by analogy, judgment of 22 June 1999,
Lloyd Schuhfabrik Meyer
, C‑342/97, EU:C:1999:323, paragraph 26). The fact that the average consumer retains only an imperfect mental image of the trade mark confers greater importance on the dominant element of the mark in question (judgment of 23 October 2002,
Oberhauser
v
OHIM — Petit Liberto (Fifties)
, T‑104/01, EU:T:2002:262, paragraph 47).
However, it follows from the observations made in paragraphs 30 to 32 above that none of the elements of the earlier mark will be perceived by the relevant public as being more visually outstanding than the others. Consequently, the applicant’s argument based on the prominence of a predominant element cannot succeed.
Lastly, having regard to the alleged greater role played by the visual aspect of the marks in question in the overall assessment of the likelihood of confusion in the sector relating to the broadcasting and production of television programmes, the applicant relies, in support of its argument, on the judgments of 14 October 2003,
Phillips-Van Heusen
v
OHIM — Pash Textilvertrieb und Einzelhandel (BASS)
(T‑292/01, EU:T:2003:264, paragraph 55), of 6 October 2004,
New Look
v
OHIM — Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection)
(T‑117/03 to T‑119/03 and T‑171/03, EU:T:2004:293, paragraph 50), of 18 May 2011,
IIC
v
OHIM — McKenzie (McKENZIE)
(T‑502/07, not published, EU:T:2011:223, paragraph 50), and of 24 January 2012,
El Corte Inglés
v
OHIM — Ruan (B)
(T‑593/10, not published, EU:T:2012:25, paragraph 47).
Although those judgments confirm that the visual aspect may indeed play a greater role in the overall assessment of the likelihood of confusion, the Court points out, as EUIPO has stated in its response, that those judgments concern solely goods in Classes 18 and 25, namely, for the most part, leather, clothes, shoes and headgear. In paragraph 50 of its judgment of 18 May 2011,
McKENZIE
(T‑502/07, not published, EU:T:2011:223), the Court made clear that goods coming within Classes 18 and 25 were sold through the usual distribution channels for clothes, shoes and clothing accessories, namely shops, and that the relevant public would therefore evaluate them visually. The Court added that the choice of an item of clothing, pair of shoes or clothing accessory was generally made by looking at them.
However, there are no grounds for concluding that the visual aspect should take precedence over the phonetic and conceptual aspects having regard to the services relevant to the present case, given that it has not been shown that the choice made by consumers of the services in question is based principally on a visual impression. In any event, it should be noted that the applicant has not in any way substantiated the reasons which might support an application of that specific case-law on Classes 18 and 25 to the services relevant to the present case. Accordingly, that line of argument must be rejected.
It follows from the foregoing that the Board of Appeal was fully entitled to find that there was a likelihood of confusion between the mark applied for and the earlier mark within the meaning of Article 8(1)(b) of Regulation No 207/2009. The action must accordingly be dismissed.

Costs
Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1.
Dismisses the action;
2.
Orders Globo Media, SA to pay the costs.
Collins
Kancheva
Passer
Delivered in open court in Luxembourg on 5 May 2017.
E. Coulon

A. M. Collins
Registrar

President
*
Language of the case: English.