OPPOSITION No B 2 750 167

Mey GmbH & Co. KG, Auf Steingen 6, 72459 Albstadt, Germany (opponent), represented by Hoeger, Stellrecht & Partner Patentanwälte Mbb, Uhlandstr. 14c, 70182 Stuttgart, Germany (professional representative)

a g a i n s t

Shenzhen Meykiss Trading Company Limited (China Limited Company), Room 1301, Building 1, Lane 15, Gong Village, Longhua New District, Shenzhen, People’s Republic of China (applicant), represented by Aomb Polska Sp. Z O.O., Emilii Plater 53, 28th floor, 00 113 Warszawa, Poland (professional representative).

On 26/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 750 167 is partially upheld for the following contested goods:

Class 25:        Aprons [clothing]; bath robes; braces for clothing [suspenders]; camisoles; caps [headwear]; clothing of imitations of leather; corselets; girdles; gloves [clothing]; hats; hosiery; jackets [clothing]; layettes [clothing]; masquerade costumes; neckties; outerclothing; pajamas (am.); pocket squares; ponchos; scarfs; shawls; shower caps; sports singlets; skirts; skorts; sleep masks; sports jerseys; topcoats; trousers; turbans; underwear; uniforms; waistcoats; waterproof clothing; leggings [trousers]; shoes.

2.        European Union trade mark application No 15 369 291 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 369 291 for the figurative mark. The opposition is based on the European Union trade mark registration No 6 807 648 for the word mark ‘MEY’. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

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.

1. The goods and services

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

Class 25:        Clothing, in particular underwear, night clothes, sportswear

Class 35:        Wholesale, retail and mail order services in the clothing sector, including within the framework of e-commerce.

The contested goods are the following:

Class 25:        Aprons [clothing]; bath robes; braces for clothing [suspenders]; camisoles; caps [headwear]; clothing of imitations of leather; corselets; dress shields; girdles; gloves [clothing]; hats; hosiery; jackets [clothing]; layettes [clothing]; masquerade costumes; neckties; outerclothing; pajamas (am.); pocket squares; ponchos; scarfs; shawls; shower caps; sports singlets; skirts; skorts; sleep masks; sports jerseys; topcoats; trousers; turbans; underwear; uniforms; waistcoats; waterproof clothing; leggings [trousers]; shoes.

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

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

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 goods in Class 25

The contested aprons [clothing]; bath robes; braces for clothing [suspenders] camisoles; clothing of imitations of leather; corselets; girdles; gloves [clothing]; hosiery; jackets [clothing]; layettes [clothing]; masquerade costumes; neckties; outerclothing; pajamas (am.); ponchos; scarfs; shawls; sports singlets; skirts; skorts; sports jerseys; topcoats; trousers; underwear; uniforms; waistcoats; waterproof clothing; leggings [trousers] are included in the broad category of the opponent’s clothing, in particular underwear, night clothes, sportswear. Therefore, these goods are identical. 

The contested sleep masks are highly similar to the opponent’s goods in Class 25, because they are used to cover/protect part of the human body (eyes). These goods can share the same end consumers and distribution channels and they can also be produced by the same undertakings.

The contested caps [headwear]; hats; shower caps; turbans are all articles of headgear and as such they are similar to the opponent’s clothing, in particular underwear, night clothes, sportswear. These goods are of an identical or very similar nature as they serve to cover/protect various parts of the body against the elements. They are also articles of fashion and are often found in the same retail outlets. Consumers, when seeking to purchase clothes, will expect to find footwear and headgear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce all of the aforementioned items. The same reasoning applies to the contested shoes belonging to the broad category of footwear. Therefore, they are also considered similar to the opponent’s goods in Class 25.

The contested pocket squares have some relevant points in common with the opponent’s clothing, in particular underwear, night clothes, sportswear. Although the nature of these goods is different, they may coincide in producer, end consumer, distribution channels and may be used in combination with each other. Consequently, these goods are considered similar. 

The remaining contested dress shields are fabric pads worn at the armpit to protect a garment from perspiration. They are considered dissimilar to the opponent’s clothing, in particular underwear, night clothes, sportswear. These goods have different natures and purposes, are distributed through different channels and are manufactured and provided by different undertakings. A fortiori, these goods are also dissimilar to the opponent’s services in Class 35. The opponent’s services in Class 35 consist of various forms of sale services. Therefore, these goods and services have nothing relevant in common; apart from being different in nature, since services are intangible, whereas goods are tangible, they serve different needs. Furthermore, they differ as to their producers, distribution channels and they are neither in competition nor complementary.

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, the goods found to be identical or similar are directed at the public at large with an average degree of attention.

3. The signs

MEY
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 earlier mark is a word mark ‘MEY’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the earlier mark is presented in upper- or lowercase characters.

The contested sign is composed of the verbal element ‘MEYKISS’, written in rather standard uppercase letters, partly in grey and partly in black. There is a figurative element, resembling a floral/vegetal motif placed above the verbal element.

The earlier mark ‘MEY’ does not have any clear meaning in the relevant territory for the relevant public and, therefore, its distinctiveness per se in relation to the relevant goods is normal.

It must be noted that the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

The contested expression ‘MEYKISS’, considered as a whole has no univocal meaning for the relevant public and is not used in common parlance.  However, the substantial part of the relevant public will recognize the English term ‘KISS’ in the contested sign as referring to a noun symbolising or showing affection (Definition extracted from Collins English Dictionary online on 18/09/2017). In any case, considering the aforementioned principle, it is reasonable to assume that the relevant consumers will perceive the verbal element ‘KISS’ within the contested sign because it is known to them. The fact that the elements ‘MEY’ and ‘KISS’ are graphically distinguished in different colours will further facilitate their perception in the mark. This element is neither descriptive nor lacking distinctiveness for any of the relevant goods. It does not describe or even allude to any of their essential characteristics.

The contested sign under comparison has no elements which could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the distinctive element ‘MEY’, which forms entirely the earlier mark and constitutes the initial element of the contested sign. They differ in the figurative element and overall stylisation of the contested sign and in the additional element ‘KISS’ present therein.

It must be noted that 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Consequently, the public will pay less attention to the stylisation and the figurative element of the contested sign and will focus more on the verbal element of the sign, as it will instantly perceive it as the badge of origin of the respective goods.

In addition, 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. Consequently, the public will tend to focus on the initial part ‘MEY’, depicted at the beginning of the expression ‘MEYKISS’ in the contested sign.

Taking into account all the above and the coincidence in the normally distinctive element ‘MEY’, the marks are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of their initial part ‛MEY’, present identically in both signs. They differ in the sound of the second element of the contested sign ‘KISS’. The figurative element of the contested sign does not play an aural role as it will not be pronounced.  

Considering the normal distinctiveness of the element ‘MEY’ and the importance of the impact of the initial element of a mark, it is concluded that there is a medium degree of aural similarity between the marks.

Conceptually, although the public in the relevant territory will perceive the meaning of the element ‘KISS’ within the contested sign, as explained above, the other sign has no meaning in that territory. 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 mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 goods 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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C–342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C–251/95, Sabèl, EU:C:1997:528, § 22).

The contested goods are partly identical, partly similar to various degrees and partly dissimilar to the goods for which the earlier mark is registered.

The distinctiveness per se of the earlier mark is normal.

The signs are visually and aurally similar to an average degree. They coincide in the initial letters/sounds ‘MEY’, which constitute the earlier mark and the beginning of the contested sign and this factor will certainly catch the attention of the public. The differentiating elements present in the contested sign refer to its additional element ‘KISS’ and to the less important figurative elements of the contested sign, which, however, are not sufficient to differentiate the signs effectively.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (judgment of 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323).

Consequently, the consumers will focus their attention on the letters ‘MEY’, due to their leading role within the signs in question.

Considering all the above, the Opposition Division finds that the differences between the signs under dispute are not sufficient to counteract their similarity resulting from the initial coinciding element ‘MEY’ and there is a likelihood of confusion on the substantial part of the relevant public and, therefore, the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 6 807 648.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to various degrees to those covered by the earlier trade mark.

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

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/reputation as claimed by the opponent and in relation to identical and similar goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The Opposition Division will now continue with the examination on the ground of Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

As mentioned above, the Opposition Division will now examine the opposition in relation to earlier EUTM registration No 6 807 648 for which the opponent claimed repute respectively in Germany, therefore in the relevant territory of the European Union.

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 above mentioned 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.

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

2. Reputation of the earlier trade mark

According to the opponent, the earlier mark has a reputation as result of its long standing and intensive use in Germany, therefore, within the European Union territory.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 26/04/2016. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Germany, therefore, within the European Union territory prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely

Class 25:        Clothing, in particular underwear, night clothes, sportswear.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 20/01/2017 the opponent submitted the following evidence:

The evidence consists of the following documents:

• Encl. 1 – Definition of the word ‘KISS’ provided by the Merriam Webster Dictionary

• Encl. 2 – Copy of the decision of the highest German civil Court, the Bundesgerichtshof ‘MEY’ versus ‘Ella May’ (BGH I ZB 2/04), and confirming enhanced distinctiveness of the trade mark ‘MEY’ in relation to underwear.

• Encl.  3 – Copy of the Opposition Division B 001381344 ‘MEY versus ‘MEYBELLA’ confirming a high degree of distinctiveness of the earlier mark ‘MEY’ through its use on the German market in connection with ‘woven and knitted underwear’.

• Encl. 4 – GfK Study  done in 2003 for Germany showing that the opponent’s trade mark in the market sector for ‘ladies’ day-time underwear’ accounts for 39,6% and the opponent’s trade mark ‘MEY’ was considered the market leader in this sector.

• Encl. 5 – Brigitte Communication Analysis for the period 1996-2006 showing that the degree of notoriety of the earlier mark ‘MEY’ was increasing from 30% in 1996 to 36% in 2006 in the market of ‘underwear and lingerie’.

• Encl. 6 –  Brigitte Communication Analysis of 2008 showing that the recognition of the German public of the earlier mark ‘MEY’ was in 2010 about 44% and in 2012 43% on the German market with a small decrease showed in Enclosures 7 and 8.  

• Encl. 9 – G+J Media Research Services refers to the earlier mark ‘MEY’ and shows its recognition among the German public in 2014 of about 60% and high figures of the opponent’s spending designated to its advertising and promotion activities.

• Encl. 10 – Compilation-report of the agency Schmidt & Pohlmann showing the opponent’s advertising expenditure in 2006 (1.844 million Euros) associated with the promotion of the earlier mark ‘MEY’.

• Encl. 11 – Photographs showing the opponent’s department stores (examples) and the earlier mark ‘MEY’.

• The document of the Textillwirtschaft Association in 2001 refers to the competitive achievement of the opponent’s earlier mark ‘MEY’ and to its degree of recognition among the public of 86,7% in the case of the specialist dealers in Germany.

Having examined the material listed above, the Opposition Division concludes that the earlier trade mark has acquired a reputation on the relevant market. The evidence shows a long-standing and intensive use of the ‘MEY’ mark in Germany, therefore within the relevant territory, as has been attested by diverse independent sources (surveys, analysis, researches, etc.). It is clear from the documents submitted by the opponent that the earlier mark ‘MEY’ has a strong power of identification and enjoys an extended scope of protection associated therewith in Germany. The figures related to the opponent’s advertising activities over many years evidently contributed to the fact that the opponent’s earlier mark ‘MEY’ enjoys a leading position and a substantial recognition among the general public in the sector of underwear and lingerie.

Consequently, on the basis of the above, the Opposition Division concludes that the evidence provided by the opponent shows that the earlier mark enjoys a reputation in relation to underwear and lingerie, which are included in the broad category of the opponent’s goods in Class 25.

3. The ‘link’ between the signs

As seen above, the earlier marks are reputed and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙        the degree of similarity between the signs;

∙        the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙        the strength of the earlier mark’s reputation;

∙        the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙        the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

According to the Court of Justice of the European Union,

It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks.

(Judgment of 27/11/2008, C-252/07, ‘Intel Corporation’, paragraph 48.)

The Court of Justice has also noted,

… that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered. (Judgment of 27/11/2008, C-252/07 ‘Intel Corporation’, paragraphs 51 and 52.)

As mentioned above, the signs are visually and aurally similar to an average degree. They coincide in the string of letters ‘MEY’, present identically at the beginning of the signs and form the earlier mark in its entirety.  This aspect will catch immediately the attention of the public. The Opposition Division is of the opinion that the similarity in the initial letters ‘MEY’ is not random, and the public would perceive the contested sign as referring to goods provided by the opponent. Moreover, the applicant has remained silent in this regard and did not file any observations which argue the contrary.

The earlier EUTM registration No 6 807 648 has a reputation for underwear, lingerie covered by Class 25 whereas the contested goods for which the opposition is unsuccessful under Article 8(1)(b) EUTMR are the following:

Class 25: Dress shields.

The trade marks under comparison target the same market sector, namely clothing sector. Consequently, the goods for which the earlier mark has a reputation target the public at large and the remaining contested goods are also directed at the same general public.  

Therefore, taking into account and weighing up all the relevant factors of the case, in particular the reputation of the earlier mark, the degree of similarity between the signs and the identical consumer circles, the Opposition Division concludes that when encountering the contested mark the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 96).

4. Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

∙        it takes unfair advantage of the distinctive character or the repute of the earlier mark;

∙        it is detrimental to the repute of the earlier mark;

∙        it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims in particular that ‘a high power of identification and an extended scope of protection (Art. 8(5) EUTMR) are attributed to the trade mark ‘MEY’.

Article 8(5) EUTMR is not intended to prevent the registration of all marks identical or similar to a mark with reputation. According to established case-law, ‘once the condition as to the existence of reputation is fulfilled, the examination has to proceed with the condition that the earlier mark must be detrimentally affected without due cause’ (14/09/1999, C-375/97, Chevy, EU:C:1999:408, § 30).

Even though consumers may or are likely to establish a link between the two trade marks, in the sense, for example, that the contested trade mark would bring the earlier trade mark to the minds of consumers, it does not follow automatically that the former will take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 71).

As mentioned above, the opponent should have submitted evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, which could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

This is confirmed by Rule 19(2)(c) EUTMIR, which establishes that if the opposition is based on a mark with a reputation within the meaning of Article 8(5) EUTMR, the opponent must submit evidence showing that the mark has a reputation, as well as evidence or arguments demonstrating that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

In the present case, apart from claiming a reputation and arguing that the signs were similar and the goods and services were identical or similar, the opponent did not provide any facts, arguments or evidence that could support the conclusion that the use 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. There seems to be no good reason to assume that use of the contested trade mark will result in any such events occurring. Although potential detriment or unfair advantage cannot be completely excluded, this is insufficient, as stated above.

According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office restricts its examination to the facts, evidence and arguments submitted by the parties and the relief sought.

Given that the opponent could not establish that the contested sign would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark, the opposition is considered not well founded under Article 8(5) EUTMR.

Consequently, the opposition is not well founded under Article 8(5) EUTMR and must be rejected insofar as it is based on European Union trade mark registration No 6 807 648.

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 goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Pedro JURADO  MONTEJANO

Monika CISZEWSKA

Boyana NAYDENOVA

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.