OPPOSITION No B 2 687 617

Axa, 25, avenue Matignon, 75008 Paris, France (opponent), represented by Marchais Associés, 4, avenue Hoche, 75008 Paris, France (professional representative)

a g a i n s t

AXA playtime ApS, Taarbæk Strandvej 65 C, 3. Th, 2930 Klampenborg, Denmark (applicant), represented by Bech-Bruun Law Firm, Langelinie Allé 35, 2100 København Ø, Denmark (professional representative).

On 19/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 687 617 is upheld for all the contested goods.

2.        European Union trade mark application No 14 907 406 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods in Class 28 of European Union trade mark application No 14 907 406. The opposition is based on European Union trade mark registration No 8 772 766. The opponent invoked Article 8(1)(a) and 8(5) EUTMR.

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.

1. The signs

AXA	AXA
Earlier trade mark	Contested sign

The signs are identical.

2. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union.

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 15/12/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the services for which the opponent has claimed reputation, namely:

Class 36: Insurance and finance; banking services; real estate agency services; real estate affairs; debt collection; personal insurance; Life insurance; life assurance; fire, accident, all risks insurance; reinsurance; brokerage; savings banks; monetary affairs; capital fund investments; financial evaluations and appraisals, financial investment consultancy, financial analysis; management of portfolios, financial investments; financing services; investment and mutual capital; financial transactions; debt collection; Real estate affairs, evaluation and appraisal of real estate, consultation in real estate affairs, real estate investments, management of real estate, real estate agencies, rental of real estate.

        

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 25/08/2016, the opponent submitted the following evidence:

• A presentation of the opponent’s company (extracts from the opponent’s website www.axa.com), extracts from Wikipedia about AXA and an AXA press release dated 25/02/2016.

According to these documents, AXA was founded in 1816 and adopted the name AXA in 1985. It is a multinational company engaged in global insurance, investment management and other financial services. In 2015, its total revenues were EUR 98 534 billion and its net income was EUR 5.6 billion.

• Press cuttings regarding the opponent’s advertising campaigns. They show that the opponent invested large amounts in advertising campaigns (e.g. USD 70 million in 1998 for the company’s global branding strategy; GBP 20 million in 2012).

• AXA’s annual report 2015 with gross revenues by geographic area, rankings and market share (e.g. 8.9% market share in France, 12.6% in Belgium).

• A presentation about AXA in the United Kingdom. AXA was ranked 19th in the Sunday Times 2015 survey of Top Best Big companies to work.

• A presentation about AXA in central and eastern Europe (dated 26/04/2012) as a ‘global leader in insurance’.

• Extracts from internet articles concerning the ranking of ‘AXA’. In particular:

• An article extracted from www.philstar.com, dated 14/10/2015, stating the following: ‘AXA, global leader in insurance, was recently recognized as the number one global insurance brand by Interbrand for the seventh consecutive year from 2009 to 2015’;
• An article entitled ‘The 50 most powerful corporations in the world – MBA Central’, in which the Axa Group is ranked 35th. The article says: ‘in 2014 AXA placed 33rd on Forbes’ “Global 2000” list … meanwhile, Fortune ranked AXA 16th on its 2014 “Global 500”, describing it as “Europe’s second largest insurer” ’;
• An article dated June 2015 from Fundación MAPFRE, entitled ‘Ranking of the largest European Insurance Groups 2014’, in which AXA is no 1 before ALLIANZ and GENERALI.

• AXA Activity Report 2011.

• TNS SOFRES surveys entitled ‘Brand Preference Tracking’, dated 2011 for France and the United Kingdom and 2010 for Germany. The surveys demonstrate that AXA was among the top three brands cited, coming to the mind of 37% of the people surveyed (overall brand awareness) in France, 35% in the UK and 43% in Germany.

• Extracts from internet articles and a press cutting from the newspaper The Guardian (dated 07/08/2015) in which AXA is described as one of the biggest insurers. The article from www.healthcareglobal.com states that ‘AXA is one of the most well-known and biggest health insurance providers in the UK’.

• Decisions of the Office (Boards of Appeal and Opposition Division) acknowledging AXA’s reputation.

• Decisions of French courts and of the French Intellectual Property Office (INPI) acknowledging AXA’s reputation, and decisions from the WIPO Arbitration and Mediation Center.

• Extracts from the opponent’s website in relation to online games provided by AXA for children (an app entitled ‘Max the Badger’) and in relation to an online game entitled ‘The Great Global Adventure’ intended for students in France in 2015.

• Extracts from the opponent’s website showing, inter alia, a board game about security, a set of pencils and a cuddly toy, all bearing the trade mark ‘AXA’. The prices are indicated in Swiss francs.

• A press release, dated 2011, related to an online game of chance launched by AXA in the United States (‘Pass It On!’) and a press article about an online game to educate Indonesians on insurance products.

• A press release regarding a partnership between AXA and Google Niantic Labs to integrate real world brands into ‘Ingress’, the interactive real world mobile game.

• An internet article, dated 16/12/2014, extracted from www.latribune.fr, about the abovementioned ‘Ingress’ video game.

• An internet article, dated 18/04/2015, extracted from www.espritdeservicefrance.fr, about the launch of a social serious game on customer relationships, intended for collaborators of AXA.

• Extracts from the website of the opponent’s boutique (www.boutique-axa.fr), about a cup, a pen, sweets, balloons and toy cars, all bearing the trade mark ‘AXA’.

It is clear from the evidence that the earlier trade mark has been subject to long-standing and intensive use and is generally known in the insurance market, where it enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources. The sales figures, marketing expenditure and market share shown by the evidence and the various references in the press to its success all unequivocally show that the mark enjoys a high degree of recognition among the relevant public.

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the services on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to insurance services, whereas there is no or little reference to the remaining services. This is clear, for example, from the press cuttings, the rankings and the previous decisions (acknowledging the reputation of AXA in relation to insurance services), in which only the former are mentioned. The opponent also presents itself as the first global insurance brand. While it may be the case that the opponent is active in the financial field and has companies in its group that manage funds, there is no evidence that AXA has a reputation for these services.

On the basis of the above, the Opposition Division concludes that the earlier trade mark has a reputation in the European Union, and particularly in France and other Member States (the United Kingdom and Germany), for insurance services in Class 36, for which the opponent has claimed reputation.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are identical. 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.

Firstly, as regards the degree of similarity between the marks at issue, it is clear from the case-law that, the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to it (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 67-69; 18/06/2009, C-487/07, L’Oréal, EU:C:2009:378, § 44). Moreover, the stronger the distinctive character of the earlier mark, the more likely it is that, when confronted with a later similar mark, the relevant public will associate it with that earlier mark.

In the present case, the signs are identical.

Secondly, the opponent’s sign ‘AXA’ enjoys a high degree of recognition among the relevant public and is bound to be known to a substantial part of the general public that the contested goods target. Moreover, the word ‘AXA’ is a meaningless expression, which is inherently distinctive for the services at issue. The applicant points out that there are many trade marks that include the element ‘AXA’. In support of its argument, it refers to several trade mark registrations in the European Union and in different Member States. The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘AXA’. Therefore, it is considered that the earlier mark has an inherent average degree of distinctiveness and that it also has a strong reputation in the insurance field.

Finally, as mentioned and proved by the opponent, it distributes promotional games and toys in the course of its activities. Online games have been provided for children and adults and a board game for children has been distributed in the course of its prevention and security activities. Even though, as pointed out by the applicant, the extracts submitted by the opponent show prices in Swiss francs, it nonetheless proves that the opponent also offers for sale on its website some articles such as toy cars or cuddly toys and that these goods bear the opponent’s trade mark. Likewise, although some online games have been launched by the opponent outside the European Union, others concern the European market and, in any case, this clearly indicates that the contested goods (toys; building blocks [toys]; building games) are offered, or are likely to be offered, by the opponent in the course of its activities.

Therefore, taking into account and weighing up all the relevant factors of the present case and bearing in mind that the signs are identical, that the earlier mark is inherently distinctive and, in addition, has a strong reputation in relation to insurance services and that the public has already encountered the mark in relation to toys and games, the Opposition Division has no doubt that, even though these goods belong to a market sector quite distinct from the one in which the opponent operates and has a reputation, the relevant consumers will associate the contested mark with the earlier mark, that is to say, they will 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 that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to the distinctive character and repute of the earlier trade mark.

Before examining the opponent’s claims, it is appropriate to recall that the opposition is directed against the following goods:

Class 28:        Toys; building blocks [toys]; building games.

As seen above, the earlier trade mark was found to have a reputation for:

Class 36:        Insurance services.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).

According to the opponent, there is a risk of commercial parasitism where the applicant is unfairly allowed to ‘free-ride’ on the opponent’s investment in promoting and building up goodwill for its ‘AXA’ mark, as it may stimulate the sales of the applicant’s goods to an extent that is disproportionately high in comparison with the size of its promotional investments. It also claims that, for the goods and services at issue (insurance versus games and toys), the public overlaps.

According to the Court of Justice of the European Union, as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, insofar as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to the average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 36.)

In the present case, in view of the nature of the goods and services at issue, it is considered that the relevant public against which the injury to reputation must be assessed is the average consumer in the European Union.

As seen above, there is a ‘link’ between the signs due to the identity of the signs, the inherent distinctiveness and strong reputation of the earlier mark and the relationship between the goods and services, as proved by the opponent.

According to the Court, the stronger the earlier mark’s distinctive character and reputation, the easier it will be to accept that detriment has been caused to it (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 67, 74; 25/05/2005, T-67/04, Spa-Finders, EU:T:2005:179, § 41). The same applies to the unfair advantage that the applicant might enjoy at the expense of the earlier mark. A very strong reputation is both easier to harm and more tempting to take advantage of, owing to its great value.

The Court has even stated that it is possible that an extremely strong reputation may, exceptionally, constitute in itself an indication of the future, non-hypothetical risk of the mark applied for as such taking unfair advantage in relation to each of the goods and services which are not similar to the goods and services in respect of which the earlier trade mark is registered (02/10/2015, T-625/13, Darjeeling collection de lingerie / DARJEELING et al., EU:T:2015:742, § 134, 139).

In the present case, there is a high probability that the use of the contested mark may lead to free-riding, that is to say, it would take unfair advantage of the established reputation of the earlier trade mark and the huge investments made by the opponent to achieve that reputation.

It is clear from the evidence submitted that the opponent’s advertising efforts have focused on and succeeded in not only creating widespread high awareness of the earlier mark but also ensuring that it projects a very positive image in many different respects (e.g. expertise, high service quality, reliability).

On the basis of the above, the Opposition Division is of the view that there is a serious risk that the use of the contested mark by the applicant could encourage the public to buy the applicant’s goods by reason of the association that it would make with the opponent’s trade mark, because of the high reputation, positive image and great commercial value of the earlier mark.

Therefore, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Other types of injury

The opponent also argues that use of the contested trade mark would be detrimental to the distinctive character and repute of the earlier trade mark.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.

5. Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods.

Given that the opposition is entirely successful under Article 8(5) EUTMR it is not necessary to examine the remaining grounds on which the opposition was based.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Catherine MEDINA

Frédérique SULPICE

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.