Case T‑273/16

(publication by extracts)

Sun Media Ltd

v

European Union Intellectual Property Office

(EU trade mark — Opposition proceedings — Application for the 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)

Summary — Judgment of the General Court (Third Chamber), 16 January 2018

EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Similarity between the goods or services in question — Criteria for assessment — Complementary nature of the goods or services — Adult entertainment services, and broadcasting and telecommunications services

(Council Regulation No 207/2009, Art. 8(1)(b))

It is true that the adult entertainment services in Class 41 have a different nature and different purpose from those of the services in Class 38. However, that finding is not, in itself, such as to call into question any complementarity between those services.

With regard to the complementarity between the adult entertainment services in Class 41 and the telecommunications services in Class 38, it has already been held that the production of films in Class 41 had a certain degree of similarity with broadcasting services in Class 38, given their complementary character. This is all the more so where the services in Class 41 and the broadcasting services in Class 38 have the common feature of being offered in electronic format, in some cases on the internet, to the extent that that common mode of broadcasting is liable to accentuate the similarity between those services.

In addition, it must be observed that radio and television programmes are currently being broadcast more and more via internet or broad band connections.

With regard to the complementarity between the adult entertainment services and the telecommunications services which are ‘especially’ provided in electronic and online form, it must be pointed out that services in Class 41 which are provided online have already been found to be similar to the services of ‘telecommunications; communications by computer terminals, computer-aided transmission of messages and images’ in the judgment of 12 July 2012, bluepod MEDIA.

It is true that, in the same judgment, the General Court also approved the Board of Appeal’s finding in the case in question that, even if some telecommunications operators provided some entertainment services in Class 41 using specialised subsidiaries, the consumer would not usually expect there to be a link between the supply of those entertainment services and services connected with the transmission of data by computer and data networks.

It is nevertheless appropriate to take into account the economic reality on the market as it currently exists in order to ascertain whether the finding of fact in the case which gave rise to that judgment still holds true today. It must be observed that that reality is very different from the one which prevailed even a few years ago, in particular as a result of the rapid technological developments that radically changed the manner in which audiovisual entertainment content is consumed. Moreover, whereas, in the past, traditional telecommunications service providers were only occasionally active in developing entertainment content, today they do so regularly, while entertainment companies offer services which, in the past, were the reserve of the telecommunications industries. Indeed, some companies offer packages which provide consumers with both a telecommunications connection and access to entertainment content via that connection. Telecommunications consumers can therefore be led to believe that the entertainment content provided through their internet connection is provided by the same company.

(see paras 36-42)