OPPOSITION No B 2 552 571

ECE Projektmanagement G.m.b.H. & Co. KG, Heegbarg 30, 22391 Hamburg, Germany (opponent), represented by Brandstock Legal Rechtsanwaltsgesellschaft Mbh, Rückertstr. 1, 80336 München, Germany (professional representative)

a g a i n s t

ECE Logistics Sp. z o.o. Sp. k., ul. Lotników 12, 65 138 Zielona Góra, Poland (applicant), represented by Katarzyna Sas, Kościuszki 58c, 36-020 Tyczyn, Poland (professional representative).

On 23/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 552 571 is partially upheld, namely for the following contested services:

Class 35: Marketing; advertising; radio advertising; television advertising; advertising via the press; advertising in websites on the internet; dissemination of advertisements; sales promotion of the offered services; presentation of goods via communications media (retailing); organisation of and participation in trade fairs, exhibitions and demonstrations relating to the promotion of the aforesaid services; personnel management consultancy; rental of advertising space; import-export agency services; business consultancy relating to transport and freight forwarding.

Class 36: Arranging letting of real estate; rental of apartments; leasing of buildings; letting of showrooms; leasing of office space; renting of commercial premises; arranging letting of real estate; leasing and rental of commercial premises.

Class 39: Rental of warehouses; garage rental.

2.        European Union trade mark application No 13 698 865 is rejected for all the above services. It may proceed for the remaining services, namely:

Class 35: Consumer advice shops.

Class 39: Transport services; Shipping services; Transport of specialist goods; Shipping of documents; Carting; Hauling; Shipping of goods and transport of passengers; Unloading cargo; Motor car transport services; Railway transport; International transport; Storage and warehousing of goods; Loading, handling and unloading of goods; Packaging of goods; Transport information; Shipping; Storage of goods; Brokerage in the field of transport and freight forwarding; Hire of pallet cages; Container rental; Leasing of trailers; Rental of goods vehicles; Rental of commercial vehicles; Rental of portable storage containers; Rental of transport vehicles; Rental and hire of vehicles; Rental of storage facilities.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 13 698 865 . The opposition is based on three German trade mark registrations, No 30 011 269 ‘ECE’, No 30 752 071 , No 39 863 371 ‘ECE’, one international trade mark registration, designating the European Union and Croatia, No 965 204  , two well-known marks,  and ‘ECE’, and two trade names, ‘ECE’ and , and one title, ‘ECE’. For the well-known marks the opponent indicated that the territories where they were well-known were all the individual member states of the European Union and for the two trade names and the one title the opponent indicated that the territories where they were protected were the European Union and all the individual member states of the European Union. The opponent invoked Article 8(1)(b) and 8(5) EUTMR for the national and international marks, Article 8(1)(b) EUTMR for the well-known marks and Article 8(4) EUTMR for the two trade names and the one title.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration No 965 204 designating the European Union.

1. The services

The services on which the opposition is based are the following:

Class 35: Planning of real estate property and establishments from a business point of view, particularly of retail and service establishments such as shopping centers, of health facilities and care facilities such as hospitals, old people's homes and nursing homes, of traffic stations such as railway stations and airports, parking facilities such as multi-storey car parks, of office buildings and administrative buildings and of logistics facilities such as goods distribution centers; marketing research; advertising; business management; business administration; office functions.

Class 36: Financial planning, rental and administration of real estate property and establishments, particularly of retail and service establishments such as shopping centers, of health facilities and care facilities such as hospitals, old people's homes and nursing homes, of traffic stations such as railway stations and airports, parking facilities such as multi-storey car parks, of office buildings and administrative buildings and of logistics facilities such as goods distribution centers (included in this class); insurance underwriting; financial affairs; monetary affairs; real estate affairs.

Class 37: Construction of real estate property and establishments, particularly of retail and service establishments such as shopping centers, of health facilities and care facilities such as hospitals, old people's homes and nursing homes, of traffic stations such as railway stations and airports, parking facilities such as multi-storey car parks, of office buildings and administrative buildings and of logistics facilities such as goods distribution centers; construction; repair work carried out to the aforesaid real estate and establishments, installation services.

Class 42: Technical planning of real estate property and establishments, particularly of retail and service establishments such as shopping centers, of health facilities and care facilities such as hospitals, old people's homes and nursing homes, of traffic stations such as railway stations and airports, parking facilities such as multi-storey car parks, of office buildings and administrative buildings and of logistics facilities such as goods distribution centers; scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

In addition the opponent has filed a declaration of goods and services under Article 28(8) EUTMR by means of which the opponent requested to add some services to the list of services of earlier international registration trade mark No 965 204. The Office has not yet treated this declaration. These services are the following:

Class 35: Business investigations, economic forecasting, fashion shows for promotional purposes (organization of -), marketing, marketing studies, modelling for advertising or sales promotion, news clipping services, opinion polling, organization of exhibition for commercial or advertising purposes, organization of trade fairs for commercial or advertising purposes, procurement services for others [purchasing goods and services for other businesses], public relations, sponsorship research, publicity material rental, rental of advertising space, rental of advertising time on communication media, shop window dressing.

Class 36: Financial consultancy, financial information, financial sponsorship, insurance consultancy, insurance information.

Class 37: Building construction supervision, computer hardware (installation, maintenance and repair of -), construction consultation, construction information, repair information.

Class 42: Cloud seeding, conversion of data or documents from physical to electronic media, digitalization of documents [scanning], rental of computer software, rental of web servers.

The contested services are the following:

Class 35: Marketing; Advertising; Radio advertising; Television advertising; Advertising via the press; Advertising in websites on the Internet; Dissemination of advertisements; Sales promotion of the offered services; Presentation of goods via communications media (retailing); Organisation of and participation in trade fairs, exhibitions and demonstrations relating to the promotion of the aforesaid services; Personnel management consultancy; Consumer advice shops; Rental of advertising space; Import-export agency services; Business consultancy relating to transport and freight forwarding.

Class 36: Arranging letting of real estate; Rental of apartments; Leasing of buildings; Letting of showrooms; Leasing of office space; Renting of commercial premises; Arranging letting of real estate; Leasing and rental of commercial premises.

Class 39: Transport services; Shipping services; Transport of specialist goods; Shipping of documents; Carting; Hauling; Shipping of goods and transport of passengers; Unloading cargo; Motor car transport services; Railway transport; International transport; Storage and warehousing of goods; Loading, handling and unloading of goods; Packaging of goods; Transport information; Shipping; Storage of goods; Brokerage in the field of transport and freight forwarding; Hire of pallet cages; Rental of warehouses; Container rental; Leasing of trailers; Garage rental; Rental of goods vehicles; Rental of commercial vehicles; Rental of portable storage containers; Rental of transport vehicles; Rental and hire of vehicles; Rental of storage facilities.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The terms ‘particularly’ and ‘such as’, used in the opponent’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested services in Class 35

Advertising is identically contained in both lists of services.

The contested marketing; radio advertising; television advertising; advertising via the press; advertising in websites on the internet; dissemination of advertisements; sales promotion of the offered services; rental of advertising space are included in the broad category of, or overlap with, the opponent’s advertising. Therefore, they are identical.

The contested personnel management consultancy and business consultancy relating to transport and freight forwarding are two specific types of consultancy services. Consultants gather information and provide tools and expertise to enable their customers to carry out their business or to provide businesses with the necessary support to acquire develop and expand their market share. Despite being specifically directed at personnel management and transport these two services are considered to be included in the broad category of, or overlap with, the opponent’s business management. Therefore, they are identical.

The contested import-export agency services are similar to the opponent’s business management, as they can coincide in provider, end user and distribution channels.

The contested organisation of and participation in trade fairs, exhibitions and demonstrations relating to the promotion of the aforesaid services; presentation of goods via communications media (retailing) are similar to a low degree to the opponent’s advertising, as they have the same purpose and they can coincide in end user.

The contested consumer advice shops refer to outlets that provide consumers with advice such as explaining their statutory rights regarding purchases of goods or services. The opponent’s services, which can be summarised as planning of real estate, advertising, business management, business administration, office functions in Class 35, insurance, financial and real estate services in Class 36, construction, repair and installation of property in Class 37 and technical planning of real estate property and establishments, scientific and technological services and research and design, industrial analysis and research, design and development of computer hardware and software in Class 42, have a different nature, purpose and methods of use when compared to consumer advice shops. They have different origins and consumers. These services are dissimilar.

Contested services in Class 36

The contested arranging letting of real estate; rental of apartments; leasing of buildings; letting of showrooms; leasing of office space; renting of commercial premises; arranging letting of real estate; leasing and rental of commercial premises are included in the broad category of the opponent’s real estate affairs. Therefore, they are identical.

Contested services in Class 39

The contested rental of warehouses; garage rental are similar to the opponent’s real estate affairs in Class 36. They have a similar nature and purpose and may be provided by the same companies (real estate agents) to the same public via the same distribution channels.

The contested brokerage in the field of transport and freight forwarding is dissimilar to the opponent’s services in Classes 35, 36, 37 and 42. The contested services can be summarised as the act of finding providers of transport services and others with goods to ship and bringing the two together to complete a commercial agreement, whilst the opponent’s services, which have already been summarised above, are related to planning real estate, advertising, business management, business administration, office functions, insurance, financial and real estate, construction, repair and installation of property, technical planning of real estate property and establishments, scientific and technological services and research and design, industrial analysis and research, design and development of computer hardware and software. None of these services have links such as a similar purpose, nature or methods of use. They do not come from the same providers and they are not likely to be found via similar distribution channels and do not target the same end users. Finally, they are not interchangeable or in competition with one another. They are, therefore, dissimilar.

Furthermore, the remaining contested services, namely transport services; shipping services; transport of specialist goods; shipping of documents; carting; hauling; shipping of goods and transport of passengers; unloading cargo; motor car transport services; railway transport; international transport; storage and warehousing of goods; loading, handling and unloading of goods; packaging of goods; transport information; shipping; storage of goods; hire of pallet cages; container rental; leasing of trailers; rental of goods vehicles; rental of commercial vehicles; rental of portable storage containers; rental of transport vehicles; rental and hire of vehicles; rental of storage facilities are found to be dissimilar to all the opponent’s services.

This is because the contested services, which can be summarised as a wide range of transport services, storage and packaging of goods, and the rental of commercial vehicle and storage facilities, such as pallets and containers, are all specific services related to transport and storage, whilst the opponent’s services, which have already been summarised above, are related to planning real estate, advertising, business management, business administration, office functions, insurance, financial and real estate, construction, repair and installation of property, technical planning of real estate property and establishments, scientific and technological services and research and design, industrial analysis and research, design and development of computer hardware and software. None of these services have links such as a similar purpose, nature or methods of use. They do not come from the same providers (transport companies and vehicle rental companies on the one hand and advertisers, business consultants, real estate agencies, banks and other financial institutions, insurers, constructors, etc. on the other). They are not likely to be found via similar distribution channels and do not target the same end users. Finally, they are not interchangeable or in competition with one another. The fact that the opponent’s construction or financial services are aimed at providing properties that can be used by transport operators is insufficient for finding similarity. They are, therefore, dissimilar.

Contrary to the opponent’s arguments, the earlier right does not cover import-export agencies and these services do not fall under the usual and natural meaning of business administration or business management services covered by the opponent’s right. Regarding the opposition decisions of the Office No 2 266 784 and No 1 971 632 referred to by the opponent to support the above argument, it must be noted that the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T 281/02, Mehr für Ihr Geld, EU:T:2004:198). Furthermore, the Office’s higher instance Board of Appeals has concluded that import-export agencies services are not identical to business management or business administration (see decisions of 29/04/2014 – R 710/2013-5 – MANGO TOUCH / mango (FIG. MARK), § 31 and 24/11/2016, R 2199/2015-2, RADRAGS / REWIND by RED RAG (fig.) et al. § 35), which means that the opponent’s broad categories of business services do not include import-export agencies services and that, ultimately, there is no similarity between the contested transport and logistics services and the opponent’s business services.

Finally, all the services found dissimilar above, are also dissimilar to all the additional services listed by the opponent in their declaration under Article 28(8) EUTMR. These additional services cover either the same terms (for example marketing), or essentially fall under previously listed categories, (for example business investigations appear under business management or insurance information falls under insurance underwriting) or are very specific items (for example, shop window dressing, cloud seeding, rental of web servers). None of these services are closer to those services already found dissimilar above.

Therefore, even if all the additionally claimed services were accepted by the Office, the outcome of the opposition would be the same. Consequently, it is unnecessary to suspend the proceedings until a final decision is taken in relation to the application to enter the declaration in the European Union Trade Marks Register.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, some of the services found to be identical or similar are directed at both the public at large and professionals, for example rental of apartments and garage rental, but others are directed solely at professionals such as business owners, for example advertising, leasing of office space, etc. However, all the services at issue are specialised and infrequent purchases, therefore the relevant consumer is deemed to possess a higher-than-average degree of attention.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The signs are as shown above.

The element ‘ECE’, which is present in both signs, has no dictionary meaning for the relevant public. The applicant argued that it could be understood as one of many abbreviations (such as Early Childhood Education) and supplied a list of English associations or technical phrases from www.abbreviations.com which use the letters ‘ECE’. However, no evidence was supplied to show that the public in any of the relevant territories does actually assign these or any other meaning to this sequence of letters of either mark. Therefore, as this element has no clear meaning with respect to the services in question, it is considered to be distinctive to a normal degree.

The element ‘LOGISITICS’ of the contested sign will be understood by the English speaking public as meaning the organization of supplies, stores, quarters, etc. It is also likely that it will be understood by business professionals from other territories either due to the similarity of the equivalent word, for example logística in Spanish, Logistik in German, Logistyka in Polish, logistiek in Dutch, or the use of the English word. For the contested Class 35 services of import-export agency services; business consultancy relating to transport and freight forwarding and the Class 39 services of rental of warehouses; garage rental it must be considered as a weak element. However, for the remaining services found identical or similar it has no clear meaning and it is considered to be distinctive to a normal degree. This is also the case for that part of the relevant public that will not understand this English word and, therefore, it will also be of normal distinctiveness for this part of the public.

As regards the earlier sign, it is composed of a distinctive verbal element, namely the letters ‘ECE’, and a less distinctive figurative element of a purely decorative nature, namely the image of a ribbon or arc which appears beneath and to the right of the verbal element. Therefore, the verbal element is more distinctive than the figurative element.

The figurative device at the beginning of the contested sign is more memorable than the earlier mark’s ribbon or arc. However, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

The use of colour and stylization on the verbal elements of both signs will not have a big impact on the relevant consumers, as they will more likely pronounce them rather than describe the manner in which they are presented.

Neither sign has any element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the verbal element ‘ECE’, although not exactly in the exact manner in which they are presented. They differ in the remaining elements, namely their figurative elements and the additional verbal element ‘LOGISTICS’ of the contested sign.

Therefore, and bearing in mind that at least in the earlier sign the shared element is the most distinctive element, the signs are similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘ECE’, present identically in both signs. The pronunciation differs in the sound of the word ‘LOGISTICS’ of the contested sign, which has no counterpart in the earlier mark.

Therefore, the signs are similar to an average degree.

Conceptually, for a part of the public in the relevant territory neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

However, for a part of the public, for example at least those who speak English, although they will perceive the meaning of the word ‘LOGISTICS’ in the contested sign, as explained above, the other sign has no meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier trade mark enjoys a high degree of distinctiveness and reputation due to an extensive and longstanding use in the European Union and Germany, in connection with all the services for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent filed some evidence with the Notice of Opposition. However, the other evidence filed by the opponent was submitted late (i.e. after the time limit for substantiation had expired) and, therefore, it cannot be taken into account.

Considering that the evidence of use is set out in its entirety in this section, the Opposition Division will also determine here whether or not the earlier mark has a reputation insofar as it is relevant to the opposition.

The opponent submitted the following evidence:

• Three pages of a publication of the opponent entitled “Partner for Logistics & Light Industrial”. The pages are in English and whilst they are undated there is a list of success stories running from 1978 to 2014. The document indicates that the trade mark is used in developing distribution centres and light industrial projects for third parties.

• Eight pages of screenshots from the opponent’s website, ece.com, although two of the pages are repetitions. The pages are in English and whilst they are undated there is evidence from the text that they were printed sometime after January 2017. The pages show that the company was founded in 1965, and the opponent “plans and realises commercial property and logistics centers” for companies such as “Siemens, Kühne + Nagel, Hermes or the Otto Group” with “more than 550,000m2 of logistics area realised to date” and has “revitalised five large-scale train stations” in Germany and Austria.

This evidence is considered to be insufficient to show that the earlier mark has acquired an enhanced degree of distinctiveness or a reputation.

The evidence filed by the opponent, taken as a whole, provides indications that its mark has been active in trade and present in the market in relation to certain services, as can be seen above. However, the evidence submitted within the time limit to substantiate the enhanced distinctiveness of the mark fails to show the intensive use claimed by the opponent. Firstly, all the evidence comes from the opponent, and none from independent sources. Therefore, it is impossible for this evidence alone to corroborate the opponent’s statements and reflect in a clear and objective manner the degree of recognition of the earlier mark among the relevant public. Secondly, whilst the documents give an indication that the opponent has been trading since 1965 and make reference to the current services offered by the opponent, they do not evidence the intensity of the use or the turnover achieved or the market share gained under the earlier trade mark. Finally, and most importantly, the evidence does not allow the Opposition Division to conclude on the proportion of the public which identifies these services as originating from the opponent.

Therefore, the evidence filed within the time limit for submitting evidence of the enhanced distinctiveness of the earlier mark does not prove that the earlier mark has reached the required threshold for enhanced distinctiveness or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The contested services have been found to be partially identical, partially similar to various degrees and partially dissimilar to the services covered by the earlier international registration No 965 204.

The signs under comparison are visually and aurally similar to an average degree, and either not similar conceptually or the conceptually aspect does not influence the assessment of the similarity of the signs.

The similarity between the signs is on account of the common element ‘ECE’, which constitutes the most distinctive element of the earlier mark and appears in the contested sign as both an independent distinctive element and the first verbal element. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

The signs differ in the additional word, ‘LOGISTICS’, and in the stylisation and figurative elements present in both signs. With respect to the figurative elements, the arguments detailed above in section c) regarding their impact indicate that consumers will generally pay more attention to verbal elements and it is reasonable to assume that the public will refer to the signs as ‘ECE’ and ‘ECE LOGISTICS’.

Article 8(1)(b) EUTMR states that, upon opposition, a EUTM application shall not be registered if because of its identity with or similarity to the 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. In the present case, consumers may believe that the contested sign is a new line of services provided under the opponent’s ‘ECE’ mark. This is especially the case for those services where ‘LOGISTICS’ is weak (see section c) above).

Considering all the above, the Opposition Division finds that the differences between the signs are not capable of counteracting the similarity resulting from their coinciding element, ‘ECE’, and that, for identical and similar services, there is a likelihood of confusion, including a likelihood of association, on the part of the public, and this is the case even after taking into consideration the higher degree of attention. Furthermore, for those services found similar to a low degree there is still a likelihood of confusion given that the contested mark reproduces the earlier mark’s only distinctive element as its first verbal element.

Therefore, the opposition is partially well founded on the basis of the opponent’s international registration No 965 204.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this earlier right and this article and directed at these services cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

• German trade mark registration No 30 011 269 for the word mark ‘ECE’;

• German trade mark registration No 30 752 071 for the figurative mark ;

• German trade mark registration No 39 863 371 for the word mark ‘ECE’;

• international trade mark registration, designating Croatia, No 965 204 .

Since these marks are either identical to or consist entirely of the verbal element present in the mark which has been compared and cover the same or a narrower scope of services, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

The Opposition Division finds it appropriate to now continue the opposition in relation to Article 8(5) EUTMR which the opponent claimed for all three German trade mark registrations and the international trade mark registration designating the European Union and Croatia.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

∙ The signs must be either identical or similar.

∙ The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

∙ Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade marks

The evidence supplied by the opponent to support its claim of a reputation for the three earlier national trade marks and the international designation has been listed and analysed above under section d) of the grounds of Article 8(1)(b) EUTMR. Whilst this analysis was carried out specifically for the international designation No 965 204 designating the EU, its findings are equally valid for the three German trade mark registrations as well as the international registration’s designation to Croatia given that the signs are either identical or word marks featuring the same verbal elements. Therefore, reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade marks have a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected in so far as it is based on this ground.

WELL-KNOWN TRADE MARK – ARTICLE 8(2)(c) EUTMR IN CONNECTION WITH ARTICLE 8(1)(b) EUTMR

Based on Article 8(1)(b) in connection with Article 8(2)(c) EUTMR, the opponent invoked earlier well-known trade marks,  and ‘ECE’, in all the individual member states of the European Union.

a) Substantiation of well-known trade marks

According to Article 76(1) EUTMR, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought. It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a well-known mark within the meaning of Article 8(2)(c) EUTMR the opposing party must provide evidence showing that this mark is well-known in the relevant territory — according to Rule 19(2)(b) EUTMIR. In the present case, the evidence filed by the opponent has been listed and analysed above under section d) of the grounds of Article 8(1)(b) EUTMR.

This evidence is insufficient to substantiate the opponent’s earlier well-known trade marks in the relevant territories. Despite showing some use of the trade marks, the evidence provides very limited information on the extent of such use. The evidence, which consists entirely of statements made by the opponent and without any independent third party evidence, does not provide any indication of the degree of recognition of the trade marks by the relevant public. Furthermore, the evidence does not give any indication of the commercial volume of the activities related to the trade marks, such as via invoices or sales figures. There is also no information regarding the market share of the trade marks or the extent to which the trade marks have been promoted. As a result, the evidence does not show the degree of recognition of the trade marks by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade marks are well-known within the meaning of Article 8(2)(c) EUTMR in the relevant territories.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this ground.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

Preliminary remark

When the opponent filed the Notice of Opposition they indicated that the three non-registered marks were protected in the European Union and all the individual member states of the Union. However, in its later submissions only reference was made to Germany and, specifically, the opponent only mentions German national law. Consequently, the opponent has either implicitly limited the scope of Article 8(4) EUTMR to Germany, or has failed to submit any evidence for national law of any of the other territories indicated in the Notice of Opposition. In either case, the Opposition Division will proceed on the basis that the earlier rights are German national rights.

a) Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by preventing an earlier right which is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved to signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 157, 159, 160, 163 and 166).

In the present case, the contested trade mark was filed on 03/03/2015. Therefore, the opponent was required to prove that the signs on which the opposition is based were used in the course of trade of more than local significance in Germany prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for the goods and services claimed by the opponent for these signs, namely all goods and services, in particular, but not limited to, those goods and services with relation to transport and logistics.

The evidence supplied within the relevant deadline by the opponent to support its claim has been listed and analysed above under section d) of the grounds of Article 8(1)(b) EUTMR. This analysis was carried out specifically for the international designation No 965 204 and for the claim of enhanced distinctiveness/reputation. However, the requirement under Article 8(4) EUTMR is different, namely the earlier signs must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark.

As mentioned above, the opponent’s evidence taken as a whole, provides indications that its signs have been active in trade since 1965 and present in the German market in relation to certain services, described in the opponent’s words as “plans and realises commercial property and logistics centers” and has “revitalised five large-scale train stations”.

The General Court held that the significance of a sign used to identify specific business activities must be established in relation to the identifying function of that sign. That consideration means that account must be taken of the geographical dimension of the sign’s significance and of the economic dimension of the sign’s significance, which is assessed in the light of the length of time for which it has fulfilled its function in the course of trade and the degree to which it has been used, of the group of addressees among which the sign in question has become known as a distinctive element, namely consumers, competitors or even suppliers, or even of the exposure given to the sign, for example, through advertising or on the internet. (24/03/2009, T-318/06 – T-321/06, General Optica, EU:T:2009:77, §37).

In the present case, the length of time appears to be clear with the evidence suggesting use since 1965. However, the evidence, which is limited entirely to statements made by the opponent, does not provide any clear or independent proof of the economic dimension of the signs. There is no information, such as sales figures, invoices, published company accounts, market share or details of advertising activities carried out by the opponent, which could confirm the impact of the non-registered signs used in the course of trade to provide evidence concerning the commercial volume of use.

Consequently, the Opposition Division concludes that the opponent has not provided sufficient evidence to prove that the claimed signs were used in the course of trade of more than local significance in Germany.

As listed above, it is a requirement for the opposition to be successful under Article 8(4) EUTMR that the earlier signs be used in the course of trade of more than local significance. Since this has not been established, one of the necessary conditions contained in Article 8(4) EUTMR is not fulfilled, and the opposition must be rejected in so far as it is based on this ground.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Chantal VAN RIEL

Ric WASLEY

Vita VORONECKAITĖ

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.