The General Court of the European Union issued a decision on 16th January 2018 in connection with a conflict between META4 Spain S.A. and Sun Media Ltd, as the owners of the trade marks “META 4” (European trade mark no. 8335606 and Spanish trade mark no. 2715485) and “METAPORN” (European trade mark no. 11819281), respectively.
The dispute started with the submission of an opposition by META4 Spain S.A. , based on its trademark “META 4” against the trademark owned by Sun Media Limited “METAPORN”, which was partially successful in all classes (35,38 and 42), but class 41. Subsequently, Sun Media Ltd brought an appeal before the EUIPO’s Board of Appeal which upheld the Opposition Division’s decision and dismissed the appeal. Therefore, Sun Media Limited appealed the BoA’s decision to the General Court of the European Union.
One of the main points on which the dispute was based before the General Court was about whether “telecommunication services” covered by the mark “META 4” in Class 38 and “adult entertainment services” covered in Class 41 by the contested “METAPORN” were similar or dissimilar. Although adult entertainment services have different nature and intended purpose in comparison with telecommunication services, the General Court stated that both are similar to a low degree due to their complementary character, holding the same arguments as that of the Board of Appeal when deciding on the matter on 3rd March 2016. According to the General Court, adult entertainment services includes production of films whilst telecommunication services contains broadcasting services, and both type of services are closely related since the films are to be broadcasted in order to reach the public. Moreover, it is noted that adult entertainment services are especially provided online as well as telecommunication services cover, inter alia, “communications by computer terminals, computer-aided transmission of messages and images”, coinciding both services in the manner of broadcasting, that is to say, online (Internet or broadband connections).
In conclusion, and having regard to the connection between film’s production and broadcasting services together with the Internet as the common manner of broadcasting, the General Court confirmed the similarity between telecommunication services and adult entertainment services due to their complementary character, therefore, leading into the risk of likelihood of confusion for the relevant public as the consumer would expect a link between the provider of entertainment services and the provider of data transmission by computer and data networks. This is also because, in recent times of rapid technological development, telecommunication companies are more and more offering “packages” including entertainment content, according to the Court.