BACKGROUND OF THE CASE

On 24 February 2015 Telefonica applied for the registration of the trademark “MOVISTAR SERIES” for Classes 35, 38 and 41. However, on 16 June 2015 Heinrich Bauer Verlag KG filed an opposition on behalf of an earlier German trade mark “MovieStar”. On 30 September 2020, the Opposition Division upheld the opposition. Against this decision, Telefonica filed an appeal on 24 November 2020.

DECISION OF THE FOURTH BOARD OF APPEAL

The Board of Appeal found that the Opposition Division had been correct in its assessment of likelihood of confusion between the marks at stake. Regarding the comparison between the goods and services, it found that the services in Class 35 where in part identical in part similar to those of the earlier trademark, while the ones in Classes 38 and 41 were identical; something which Telefonica did not question.

When comparing the signs, the Board of Appeal found that visually the signs where similar to an average degree, since the only differences where the letter “E” in the earlier mark, the additional term “SERIES” in the contested trade mark, the different stylisation of the verbal elements and the figurative elements. The Board of Appeals, supporting the view from the Opposition Division, understands that these differences are not enough to have an impact on the public, since according to settled case-law, when comparing signs which consist of both figurative and verbal elements, the verbal elements have a stronger impact on consumers. From an aural perspective, the signs are similar to an average to high degree, since for the part who will have an imperfect recollection of the trade marks will pronounce them identically, while for the rest of the public the pronunciation will vary in just one letter. Lastly, it was found that conceptually, the comparison is neutral, as “Moviestar” will evoke a famous actor, while “Movistar”has no specific meaning and “series” will be understood as a series of programmes.

Telefonica argued that both trademarks could peacefully coexist on the market bringing evidence of many other “Movistar” trade marks registered and stressed the important degree of distinctiveness and reputation of the trade mark. However, the Board of Appeal rejected this argument for two reasons. First, because Telefonica failed to establish the coexistence of the two trademarks, it is a prerequisite to show that the relevant public has found both of them during the time that they were marketed. Furthermore, the Board of Appeal stressed that in the context of relative grounds for refusal, the degree of distinctiveness or reputation of the contested sign is not relevant, it is only relevant in regards to the earlier trade mark.

For all those reasons, the Board of Appeal dismissed the appeal filed by Telefonica and found that likelihood of confusion exists between the earlier trade mark “MovieStar” and the contested trade mark “Movistar Series”.

Decision of the Fourth Board of Appeal, of 8 June 2021, Case R 2228/2020-4