The trademark PHANTOM was filed by Phantom Studios Limited, a corporation established under the laws of the United Kingdom of Great Britain and Northern Ireland (the "Applicant"). The application was published for oppositions on May 11, 2016, and received undefined oppositions.
Opposition Proceedings
There are undefined oppositions were filed:
The first opposition filed on August 11, 2016 by IGT, a Nevada Corporation on Likelihood of confusion. the opponent was represented by Herlitz, Armin and its proceedings were handled in English
The second opposition filed on August 11, 2016 by The Really Useful Group Limited on (a) Likelihood of confusion, (b) Unfair advantage and detriment to distinctiveness or repute, (c) Earlier non registered TM & right to prohibit use of later TM under national law. the opponent was represented by BOULT WADE, S.L. and its proceedings were handled in English
The third opposition filed on August 9, 2016 by Hearst Holdings, Inc. on (a) Likelihood of confusion, (b) Unfair advantage and detriment to distinctiveness or repute. the opponent was represented by POTTER CLARKSON LLP and its proceedings were handled in English
The fourth opposition filed on July 4, 2016 by Touch Networks, Inc. on (a) Identity of marks and Goods and Services, (b) Likelihood of confusion, (c) Unfair advantage and detriment to distinctiveness or repute. the opponent was represented by MITSCHERLICH, PATENT- UND RECHTSANWÄLTE, PARTMBB and its proceedings were handled in English
The application was filed in English, and English was also language of all opposition proceedings (Italian was selected as the second language).
Appointment and Replacement of representative of the trademark registration was recorded on July 26, 2016. Appointment and Replacement of representative of the trademark registration was recorded on July 26, 2016. Appointment and Replacement of representative of the trademark registration was recorded on January 4, 2021. Change of name and professional address of the trademark registration was recorded on July 5, 2023.
The Appeal with reference B R1716/2018-2 was Proceedings terminated according to Article 49(1) EUTMR with decision issued on December 1, 2019 by the EUIPO. The Opposition with reference B 002728353 was partially refused EUTMA/IR according to Article 8(1)(a) CTMR with decision issued on July 2, 2018 by the EUIPO.
Goods And Services
The mark was filed in class 9 with following description of goods:
Downloadable, non-downloadable, interactive and networked software, files and applications for computers, multi-function hand-held computers, electronic personal organizers, e-readers, tablet computers, personal audio players, mobile phones
Magnetic data carriers, audio CDs
Compact discs, DVDs and other digital information carrying mediums, including with recordings
Downloadable, non-downloadable, interactive and networked software, files and applications for computers, multi-function hand-held computers, electronic personal organizers
E-readers, tablet computers, personal audio players
Computer software, including software for or relating to sports, competitions, celebrities, sports figures, tournaments, live events, televised events, performances, exhibitions, documentaries, videos, video compilations, music and music concerts, highlight reels, ticket sales, merchandise sales, business, advertising, marketing, publication relations
Computer software, including software for or relating to education, fan clubs, sports clubs, business administration, business efficiency, business management, staff training, staff support, social networking, database access, product and service recommendations, product sourcing and sales improvement
Downloadable video files and files for playing video
Downloadable digital media and computer files
Downloadable digital animations and moving images
Floppy discs
Hard discs
Teaching apparatus
Downloadable digital media and computer files being text messages, video messages, musical messages and multimedia messages
Downloadable digital educational media
Electronic publications and downloadable electronic publications
Interactive data media
Podcasts
Broadcasting apparatus and equipment
Apparatus for recording, transmission or reproduction of sound and/or images
Electronic publications
Communications and telecommunications apparatus
Computers
Multimedia recordings and publications
Personal computer, mobile computer, tablet computer, e-reader and phone applications
Personal computer, mobile computer, tablet computer, e-reader and phone applications for or relating to sports, competitions, celebrities, sports figures, tournaments, live events, televised events, entertainment sports, sports training, stunts, tricks, performances, exhibitions, documentaries, videos, video compilations, music and music concerts, highlight reels, ticket sales, merchandise sales, education, combat, martial arts, extreme sports, fan clubs, sports clubs, sports camps
Contact lenses, spectacles, eyeglasses, sunglasses, eyewear and their frames, cases, chains and lenses
Cases and stands for mobile phones, e-readers, tablet computers, computers, personal audio players, electronic personal organizers
Downloadable ring tones, music, multimedia, audio-visual media, MP3s, graphics, videos, images and information for wireless mobile communication devices
None of the aforementioned products being computer gaming software for gambling purposes
All the aforesaid goods excluding downloadable digital audio and video recordings, CDs, DVDs or other digital information carrying mediums containing multimedia content relating to musicals, theatrical shows, soundtracks of musicals and theatrical shows, film adaptations of musicals and theatrical shows and game adaptations of musicals and theatrical shows
None of the aforesaid goods being related to or being merchandise sold in connection with musicals, theatrical shoes and film or game adaptations thereof.
The mark was filed in class 35 with following description of goods:
Advertising, marketing, promotional and public relations services
Advertising, promotional, public relations and marketing communications
Corporate communications services
Advertising agency, marketing agency, promotional agency and public relations agency services
Business project management services
Interactive and non interactive marketing
Marketing studies
Online and internet advertising, promotion and marketing services
Internet keyword marketing services
Experimental marketing, promotion and advertising services and campaigns
Immersive and virtual marketing, promotion and advertising services and campaigns
Viral marketing, promotion and advertising services and campaigns
Video marketing, promotion and advertising services and campaigns
Creation of advertising campaigns
Creation of advertisements, commercial sponsorship
Public relations services
Field marketing
Business consulting services
Organisation and exhibitions and trade fairs for commercial and advertising purposes
Marketing, advertising and consultancy services in relation to brand strategies, brand relationships, customer relationship marketing, loyalty marketing and consumer targeting
Segmentation and profiling of market data
Database marketing
Analysis of consumer responses to advertising
Creation and development of retail strategies
Optimising the utilisation of retail floor space
Studies, analysis, statistics, databases relating to business, marketing and marketing information
Advertising and marketing services in relation to data mining, data manipulation, data cleansing, data transformation, data operations and transmission of data
Providing online information relating to advertising and business consultancy services
Talent management and talent agency services
Marketing research services
Retail research services
Trend analysis services
Reprographic services
Advertising services relating to packaging
Public relations services, namely management of news and press coverage and stories
Communications services for public relations services
Creating press releases
Production of video recordings, audiovisual recordings, and digital video and audiovisual recordings for advertising purposes, marketing purposes, publicity purposes, promotional purposes, public relations purposes
Staff consultancy services, staff utilisation planning, staff management and management advice relating to staff
Search engine optimisation
Targeted advertising services
Conducting, organising, holding, arranging business and trade conferences, shows and exhibitions
Corporate identity and brand creation services
Corporate identity and brand development services
Brand creation, development, consultancy and advice
Corporate and brand image creation, development, consultancy and advice
Consultancy, design and advice and information services relating to brands, brand identity and brand development
Provision of information, advisory and consultancy services in relation to the aforementioned services
Strategy services and strategy development related to the aforementioned services.
The mark was filed in class 41 with following description of goods:
Education, instruction, seminar and training services
Cultural activities
Consumer, customer, staff and employee education, instruction and training
Staff and employee education, instruction and training for sales, management, administration, marketing, advertising, public relations, financial management
Provision of educational information through a database or the internet
Online training, instruction and education services
Professional development services and training
Personal development services and training
Career counselling (training and education advice)
Provision of information, advisory and consultancy services in relation to the aforementioned services
Provision of tests for assessment of learning from education, instruction and training
Analysis of training and instruction efficiency and efficacy
Music, video and film entertainment services
Producing video compilations
Selection and compilation of video and sound recordings
Booking of events and competitions, tickets and seats
Arranging and conducting colloquiums, exhibitions, concerts, entertainment events, conferences, congresses, seminars, symposiums, festivals, fairs, circuses, shows, workshops, fashion shows and contests
Scriptwriting services
Ghost-writing services
News reporter services
Entertainment by way of pre-recorded messages and video messages
Music, video and media recording, recording studio, and production services
Publication and publishing services, including online and over the internet
Cinema presentations
Disc jockey and dj services
Organizing, producing, arranging and curating entertainment, recreational, educational and cultural events
Entertainment services being provision of virtual or online environments within which users can interact for recreational, competition, leisure or entertainment purposes
Entertainment, education and publishing services provided by way of blogs and online forums
Entertainment and education services provided by way of podcasts
Provision of web based programmes for mobile communications devices, being non-downloadable media, multimedia, audio-visual media for entertainment purposes and publications
Entertainment and education services by way of music and media provided through the internet or mobile telephone communication
Entertainment and education services on social networking websites
The provision of on-line electronic publications and digital music (not downloadable) from the Internet
Production, preparation, exhibition of video, audio, audio-visual and radio programmes and of films, animated films, sound and video recordings
Production, preparation, exhibition of live events
Provision of recreational and entertainment facilities
Creation of formats for television and entertainment by music and video
Ideation for concepts of entertainment and educational programs
Digital music (not downloadable) supplied from MP3 websites on the Internet
Fan club services
Providing digital music (not downloadable) from MP3 Internet websites
Booking agencies
Text, image, sound and video editing services
Music, video and photographic composition services
Provision of podcasts
Video recording, taping, editing, production, exhibition
Photographic, film, video, music services
Advisory and consultancy services relating to the aforementioned services
None of the aforementioned services being gambling services
All the aforesaid services excluding entertainment in the nature of musicals, theatrical shows, live performances of soundtracks of musicals and theatrical shows, film adaptations of musicals and theatrical shows and game (interactive entertainment) adaptations of musicals and theatrical shows
All the aforesaid services excluding the creation, direction, production, preparation, exhibition, performance, publishing and distribution of musicals, theatrical shows, live performances of soundtracks of musicals and theatrical shows, film adaptions of musicals and theatrical shows, interactive entertainment adaptations of musicals and theatrical shows and music from musicals and theatrical shows
All the aforesaid services excluding the booking of tickets and seats for theatre and musical shows.
The mark was filed in class 42 with following description of goods:
Design services
Implementation of design
Design and development of downloadable application software
Design, development, implementation, updating of software and programming
None of the aforementioned services relating to computer game software and computer game hardware
Design services for business
Design services for premises
Exterior design services
Interior design services
Product and packaging design
Graphic design
Website design and development
Social media design and development, none relating to computer game software and computer game hardware
Animation design
Special-effects design
Audio design
Website design services
Provision of websites relating to any of the aforesaid services
Prototypes and roll-out design services
Design of point of sale material
Design of customer information leaflets
Design, drawing and commissioned writing, all for the compilation of webpages
Creating, testing and maintaining websites
Hosting the websites of others
Installing websites, none relating to computer game software and computer game hardware
Graphic design services
Design services relating to brands, brand identity and brand development
Brand design
Design of brand names
Software-as-service services for advertising, marketing, public relations and promotional purposes
Search engine services
Digital coding services
Coding of messages
Provision of downloadable software , none relating to computer game software and computer game hardware
Online provision of web-based applications and software
Consultancy services in relation to data mining, data manipulation, data cleansing, data transformation, data operations and transmission of data
Information, research, evaluation and consultancy services relating to any of the aforesaid.
The mark was filed in class 45 with following description of goods:
Online social networking services
Development, creation and maintenance of online social networking services
Licensing services
Social introduction and networking services
Intellectual property licensing and management
Fashion and sociological trend information services, including provided from searchable indexes and databases of information, including text, electronic documents, databases, graphics, video and audio visual information, on computer and communication networks
Licensing of computer software and other technology
Provision of information, advisory and consultancy services in relation to the aforesaid services
All the aforesaid services excluding the licensing of rights relating to musicals and theatrical shows.