Raw Penguins | Decision 2580978 – Penguin Books Limited v. FJÆRÅ HOLDING ApS

OPPOSITION DIVISION

OPPOSITION No B 2 580 978

Penguin Books Limited, 80 Strand, London WC2R 0RL, United Kingdom

(opponent), represented by Marks & Clerk LLP, Fletcher House, Heatley Road, The

Oxford Science Park, Oxford OX4 4GE, United Kingdom (professional

representative)

a g a i n s t

FJÆRÅ Holding ApS, Kurlandsgade 20, 4. Th., 2300 København S, Denmark

(applicant), represented by Nordia Advokatkontor, Østergade 16, 2. th., 1100

Copenhagen K, Denmark (professional representative).

On 09/11/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 580 978 is partially upheld, namely for the following

contested goods:

Class 9 Computer games (software); software; computer software, recorded;

computers; computer hardware; computer software (downloadable);

downloadable image files; downloadable music files; electronic

downloadable publications; downloadable ring tones for mobile

phones; video game cartridges; recorded computer software;

computer software applications, downloadable.

Class 16 Paper, cardboard, printed matter, bookbinding material, photographs,

stationery, adhesives for stationery or household purposes, albums;

pictures, pads; pencils; pencil holders; pencil sharpening machines,

electric or non-electric, pencil sharpeners, electric or non-electric;

pencil leads; bookmarkers; bookends; books; writing boards; staples

for offices; document holders; flags of paper; photographs;

photograph stands; graphic representations, graphic reproductions;

stands for pens and pencils; adhesive tape dispensers; handbooks

[manuals]; calendars; catalogues; stickers; envelopes [stationery];

occasion cards; greeting cards; magazines [periodicals]; colouring

books; note books; posters; postcards; writing instruments; writing

slates; desk pads; scratch pads; drawing instruments; writing chalk;

comic books; periodicals; printed matter; indian inks; rubber erasers;

boxes of paper and cardboard.

Class 28 Games and playthings, including (but not limited to) apparatus for

games; portable games with liquid crystal displays; controllers for

game consoles; conjuring apparatus; practical jokes [novelties]; board

games; backgammon games; play balloons; blocks (building -) [toys];

building games; controllers for toys; checkerboards; draughts;

dominoes; doll houses; dolls; dolls’ beds; dolls’ rooms; dolls’ clothes;

paper party hats; amusement machines,; automatic and coin-

operated; flying discs [toys]; swings, costume masks; skittles and

Decision on Opposition No B 2 580 978 page: 2 of 32

ninepins; detonating caps [toys]; pistols (caps for -) [toys]; confetti;

toys for domestic pets; play balloons; toy vehicles; toy figurines;

models being toys; toy pistols; air pistols [toys]; scooters [toys];

puppets; marbles for games; toy masks; scale model vehicles;

puzzles; cups for dice; roulette wheels; parlour games; chessboards;

chess games; tops (spinning -) [toys]; toys; cups for dice; card games;

dice.

2. European Union trade mark application No 13 961 214 is rejected for all the

above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95

have been repealed and replaced by Regulation (EU) 2017/1001 (codification),

Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)

2017/1431, subject to certain transitional provisions. All the references in this

decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to

the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark

application No 13 961 214 for the word mark ‘Raw Penguins’. The opposition is

based on European Union trade mark registration No 128 768, international trade

mark registration No 993 811 designating the European Union and United Kingdom

trade mark registration No 2 497 827, all for the word mark ‘PENGUIN’. The

opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of

filing of the opposition, now Article 47(2) and (3) EUTMR), if the applicant so

requests, the opponent must furnish proof that, during the five-year period preceding

the date of publication of the contested trade mark, the earlier trade mark has been

put to genuine use in the territories in which it is protected in connection with the

goods or services for which it is registered and which the opponent cites as

justification for its opposition, or that there are proper reasons for non-use. The

earlier mark is subject to the use obligation if, at that date, it has been registered for

at least five years.

The same provision states that, in the absence of such proof, the opposition will be

rejected.

The applicant requested that the opponent submit proof of use of the trade marks on

which the opposition is based, namely European Union trade mark registration

No 128 768, international trade mark registration No 993 811 designating the

European Union and United Kingdom trade mark registration No 2 497 827.

Decision on Opposition No B 2 580 978 page: 3 of 32

The contested application was published on 23/06/2015. The opponent was therefore

required to prove that the trade marks on which the opposition is based were put to

genuine use in the European Union and the United Kingdom from 23/06/2010 to

22/06/2015 inclusive.

The request was submitted in due time and is admissible as the earlier trade marks

were registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade marks for the goods and

services on which the opposition is based, namely the following:

European Union trade mark registration No 128 768

Class 9 Sound, video and data recordings; computer programs; texts in

encoded or film/fiche form; tapes, discs and records, all bearing or for recordal of

sound, video and data, storage and memory devices, rams and roms; cassettes and

cartridges for all the aforesaid goods.

Class 16 Paper, paper articles; cardboard, cardboard articles; books, printed

matter, publications; stationery; photographs; pictures; posters; artists’ materials;

instructional and teaching materials; decalcomanias, greeting cards; book marks;

coasters; playing cards; book ends, paper weights, clothing patterns; calendars and

diaries.

Class 41 Publication services.

International trade mark registration No 993 811

Class 9 Video tapes; audio tapes; compact discs; video disks; laser disks;

DVDs; CD-ROMs; electronic publications; digital media and recordings; pre-recorded

digital media and recordings; audio books; electronic books; cinematographic films;

downloadable electronic publications; downloadable digital media and recordings;

downloadable digital media and recordings containing sound, images, text,

information, signals or software; webcasts; podcasts; video podcasts; podscrolls;

electronically recorded data; electronic files; databases; teaching apparatus and

instruments; audio and visual teaching apparatus; computer games; educational

computer games; downloadable computer games; computer software; computer

programs; data-processing equipment; animated cartoons; compact disc players;

tape recorders and tape cassette players; record players; MPEG players; mp4

players; mp3 players; apparatus and instruments all for the recording, reproduction

and transmission of sound, images, video and data; computer software development

tools for social networking, building social networking applications and for allowing

data retrieval, upload, access and management; parts and fittings for all the

aforesaid goods.

Decision on Opposition No B 2 580 978 page: 4 of 32

Class 35 The bringing together for the benefit of others of books, CDs, DVDs,

audio books, tape cassettes, audio cassettes, audio CDs, eBooks, electronic

publications, downloadable electronic publications, podcasts, blogs, book and gift

vouchers, and computer programs, or of representations or descriptions of any of

those goods, so as to enable customers conveniently to view, to select and to

purchase those goods; retail services of a bookseller; retail services in the fields of

books, CDs, DVDs, audio books, tape cassettes, audio cassettes, audio CDs,

electronic publications, downloadable electronic publications, eBooks, podcasts,

blogs, book and gift vouchers, and computer programs, all provided by way of stores,

shops and retail outlets, by mail order, by telephone sales, by online catalogue, by

way of a general interest web site or by way of a specialist web site; making available

for purchase books, CDs, DVDs, audio books, tape cassettes, audio cassettes, audio

CDs, eBooks, electronic publications, downloadable electronic publications,

podcasts, blogs, book and gift vouchers, and computer programs; advertising;

business management; business administration; office functions; computerised data

storage services; organisation, operation and supervision of loyalty and incentive

schemes; advertising services provided via the Internet; production of television and

radio advertisements; accountancy; auctioneering; trade fairs; opinion polling; data

processing; provision of business information.

Class 41 Publishing services; publication of magazines, books and printed

matter; electronic publishing services; providing on-line electronic publications and/or

digital music, books and journals including via the Internet or from the World Wide

Web; providing on-line databases and directories; provision of non-downloadable

electronic publications, digital media and recordings; provision of non-downloadable

media and recordings containing sound, images, text, information, signals or

software; book club services; advice and assistance in the selection of books; supply

services for books; supply services for books to educational establishments,

provision of information to customers on books; library services; education; providing

training; entertainment; sporting and cultural activities; electronic games services

provided by means of the Internet; provision of non-downloadable computer games

and educational computer games; computer assisted education and training

services; information, advisory and consultancy services relating to all the aforesaid

services.

United Kingdom trade mark registration No 2 497 827

Class 9 Video tapes, audio tapes, compact discs, video disks, laser disks,

DVDs, CD-roms, electronic publications, digital media and recordings, pre-recorded

digital media and recordings, audio books, electronic books, cinematographic films,

downloadable electronic publications, downloadable digital media and recordings,

downloadable digital media and recordings containing sound, images, text,

information, signals or software, webcasts, podcasts, video podcasts, pod scrolls,

electronically recorded data, electronic files, databases, teaching apparatus and

instruments, audio and visual teaching apparatus, computer games, educational

computer games, downloadable computer games, data-processing equipment,

compact disc players, tape recorders and tape cassette players, record players,

MPEG players, MP4 players, MP3 players, apparatus and instruments all for the

recording, reproduction and transmission of sound, images, video and data,

computer software development tools for social networking, building, social

networking applications and for allowing data retrieval, upload, access and

management, parts and fittings for all the aforesaid goods.

Decision on Opposition No B 2 580 978 page: 5 of 32

Class 16 Paper articles, cardboard articles, printed matter, books, annuals,

publications, printed publications, comic books, song books, albums, manuals, maps,

magazines, newsletters, newspapers, periodicals, journals, catalogues, pamphlets,

leaflets, posters, all relating to books, book products, publishing, or publishing

services, labels for books, office requisites, drawing and painting materials,

apparatus and instruments, writing instruments, pens, pencils, instructional and

teaching materials in the form of games, book binding materials, book covers, book

marks, printing sets, drawings, paintings, photographs, prints, pictures, all relating to

books and/or bearing representations of book titles, calendars, paintbrushes, paint

kits tags, gift wrap, gift wrap cards, gift wrap tissue, gift boxes, wrapping paper, note

pads, paper napkins and other decorative paper items, paper party goods an d paper

party decorations, paper table cloths and table covers, paper mats, paper party

streamers, decorative transfers, rulers, erasers, greetings cards, promotional stickers

for book covers, paper signs, banners, charts relating to books and publishing,

packaging materials, paper, cardboard, parts and fittings for all the aforesaid goods.

Class 35 The bringing together for the benefit of others of books, CDs, DVDs,

audio books, tape cassettes, audio cassettes, audio CDs, e-books, electronic

publications, downloadable electronic publications, podcasts, blogs, book and gift

vouchers, and computer programs, or of representations or descriptions of any of

those goods, so as to enable customers conveniently to view, to select and to

purchase those goods; retail services connected with the sale of books, CDs, DVDs,

audio books, tape cassettes, audio cassettes, audio CDs, electronic publications,

downloadable electronic publications, ebooks, podcasts, blogs, book and gift

vouchers, and computer programs, all provided by way of stores, shops and retail

outlets, by mail order, by telephone sales, by online catalogue, by way of a general

interest web site or by way of a specialist web site; advertising; business

management; business administration; office functions; electronic data storage;

organisation, operation and supervision of loyalty and incentive schemes; advertising

services provided via the Internet; production of television and radio advertisements;

accountancy; auctioneering; trade fairs; opinion polling; data processing; provision of

business information.

Class 41 Publishing and electronic publishing of magazines, books, electronic

books and printed matter; providing on-line electronic publications of books and

journals including via the Internet or from the World Wide Web; providing on-line

databases and directories in the fields of printed matter, books and electronic

publications (downloadable and non-downloadable); provision of non-downloadable

electronic publications, digital media and recordings of magazines, books, journals

and printed matter relating to books and publishing; provision of non-downloadable

media and recordings containing sound, images, text, information, signals or

software; provision of social and fan club services relating to books; consultation and

information services relating to books and the publication of books; lending of books;

provision of information to customers on books; library services; education and

providing training relating to books and publishing; sporting and cultural activities;

electronic games services provided by means of the Internet; provision of non-

downloadable computer games and educational computer games; computer assisted

education and training services relating to books and publishing; information,

advisory and consultancy services relating to all the aforesaid services.

According to Rule 22(3) EUTMIR (in the version in force at the moment of filing the

request for proof of use), the evidence of use must consist of indications concerning

the place, time, extent and nature of use of the opposing trade mark for the goods or

services in respect of which it is registered and on which the opposition is based.

Decision on Opposition No B 2 580 978 page: 6 of 32

On 06/06/2016, in accordance with Rule 22(2) EUTMIR (in the version in force at the

moment of filing the request for proof of use), the Office gave the opponent until

11/08/2016 to submit evidence of use of the earlier trade marks. This time limit was

extended once until 11/10/2016. On 25/02/2016 and 10/10/2016, within the time limit,

the opponent submitted evidence of use.

The evidence to be taken into account is the following:

25/02/2016

 Exhibit A – Register extracts for European Union trade mark registration No 128 768,

International trade mark registration No 993 811 designating the European Union and

United Kingdom trade mark registration No 2 497 827.

 Exhibit B – A witness statement by Ms. Helena Caroline Peacock, company secretary

of Penguin Books Limited, dated 15/02/2016, along with 23 annexures referring to the

use and reputation of the PENGUIN brand.

 Annexure 1 — A copy of the Certificate of Incorporation on change of name and a

Certificate of Good Standing for Penguin Books Limited.

 Annexure 2 — An extract from the Penguin website providing background information

about the Opponent’s business.

 Annexure 3 — Extracts from the annual reports for the Opponent’s previous parent

company Pearson plc from 2009-2012 and the Opponent’s current parent company

Bertelsmann for 2013 and 2014.

 Annexure 4 — A selection of extracts containing information regarding the history of

PENGUIN, namely the following:

A website screenshot showing a timeline of the Opponent’s operations;

Extracts from “The Penguin Story”, published in 1956;

Extracts from “Fifty Penguin Years’, published in 1985;

Extracts from “Penguin by Design°, published in 2005;

Extracts from “The Book of Penguin”, published in 2009 and 2011.

 Annexure 5 — Publications showing the world ranking of PENGUIN and the Penguin

Logo around the world, including: extracts from ‘The World’s Greatest Brands” by

Nicholas Kochan and a Financial Times article from 28 October 2000.

 Annexure 6 — Various press releases and articles referring to PENGUIN as a famous

and well-known brand, including an extract from the WIPO publication “Making a

Mark”, WIPO Magazine from February 2011 and Articles from The Guardian

concerning current ownership of the PENGUIN brand.

 Annexure 7 — Images of the Penguin Logo as featured in The Logo Board Game.

 Annexure 8 — Screenshots from the PENGUIN website and a copy of the WHOIS

details for the domain name penguin.co.uk.

 Annexure 9 — Examples of the Opponent’s trade mark registrations for PENGUIN

around the world, including a UK registration dating back to 1939.

 Annexure 10 — Various photographs, press articles, advertising campaigns and

exhibition information relating to PENGUIN, including:

Copies of the Penguin ‘British Design Classic’ postage stamp;

Extracts from independent press articles relating to PENGUIN;

Extracts from Branding Guidelines for the PENGUIN brand worldwide;

Decision on Opposition No B 2 580 978 page: 7 of 32

– Evidence relating to exhibitions relating to Penguin Books;

– Photographs from international book fairs.

 Annexure 11 — Screenshots showing examples of the co-promotion and co-branding

activities of the Opponent using the PENGUIN mark with Radley, Pizza Express, The

Times, Hobbs, Baileys, The Financial Times, Angry Birds and Selfridges.

 Annexure 12 – Examples of the many awards won by the Opponent or won by authors

of books sold under the PENGUIN brand have been nominated and awarded in the

relevant time period.

 Annexure 13 – A decision obtained by the Opponent in Texas. USA which refers to the

Opponent’s exclusive and proprietary rights and goodwill in the PENGUIN mark.

 Annexure 14 – Decisions from Nominet and WIPO relating to successful domain

name complaints for PENGUIN related domain names.

 Annexure 15 – Screenshots from the Opponent’s PENGUIN branded profiles on

Twitter, Facebook and Pinterest, as well as examples of blog posts from the

PENGUIN blog. Also included are a copy of the Social Brands 100 report from 2011

and a copy of the Twitter Counter Top 100 Most Followers in Books report.

 Annexure 16 – Images of PENGUIN branded merchandise.

 Annexure 17 – Copies of the audited accounts for the Opponent.

 Annexure 18 – Photographs and information relating to book fairs at which the

PENGUIN brand has been exhibited, namely, the London Book Fair in 2012 and

2013, the Bologna Book Fair in 2012, the Frankfurt Book Fair in 2011 and 2012 and

the Pio Libri, Piu Liberi Book Fair in Rome in 2012.

 Annexure 19 – Screenshots for the Penguin Design Award from 2011 to present.

 Annexure 20 – Examples of marketing and advertising materials and campaigns

relating to the PENGUIN brand and PENGUIN products.

 Annexure 21 – Information concerning the 70°’ and 75th Birthday celebrations of the

PENGUIN brand.

 Annexure 22 – Information concerning the 800 Birthday celebrations of the PENGUIN

brand.

 Annexure 23 – Selection of independent press articles referring to the PENGUIN

brand.

10/10/2016

 A witness statement by Ms. Sinead Martin, company secretary of Penguin Books

Limited, dated 7/10/2016 along with 103 annexures (provided on a CD-ROM)

referring to the use and reputation of the PENGUIN brand.

 Annexure SMM1- Extracts from ‘Fifty Years Penguin’ outlining the early European

activities

 Annexure SMM2 – Audited accounts for the year 2015 showing a turnover for Europe

of £138,704,000. The turnover figures in the Profit and Loss Accounts are analysed

by destination in the Notes to the Financial Statements and the combined sales

figures for the United Kingdom and the rest of Europe

Decision on Opposition No B 2 580 978 page: 8 of 32

 Annexure SMM3 – Examples of the opponent’s goods for sale at the relevant sales

outlets as well as images and materials relating to the opponent’s stand at the

London Book Fair in 2012 and 2013.

 Annexure SMM4 – Screenshot of an analysis of the Independent Book Retailer chart

for the period 3 January 2015 to 1 March 2016 showing that the opponent had 26% of

the titles in the top 20 titles of the Independent Book retailer chart during that period

and dominated the top 20 chart from the weeks ending 31 October 2015 to 27

February 2016.

 Annexure SMM5 – Screenshot of an analysis of the UK Sunday Times Newspaper

bestseller lists for the period 1 January 2015 to 1 March 2016 showing that the

publications of the Penguin publishing division (labelled Penguin Adult) spent a

combined total of 449 weeks in the Sunday Times’ Top 10 bestseller charts during the

period, more than any other publisher.

 Annexure SMM6 – Screenshot of an analysis of the UK Sunday Times Newspaper

bestseller lists for the period from 1999 to 17 August 2016 showing a number of titles

from the Penguin publishing division (labelled Penguin Adult) having spent a

substantial number of weeks in Sunday Times Top 10 bestseller lists during that

period.

 Annexure SMM7 – Spreadsheet of Nielsen BookScan displaying the UK’s top 50

bestselling books for the 53-week period ending 2 January 2016 with the opponent’s

publications (labelled Penguin Group, which includes all books published by Penguin

divisions and imprints) occupying 14 positions in the top 50 during that period.

 Annexure SMM8 – Spreadsheet of Nielsen BookScan data showing publisher market

share through Nielsen BookScan panel of UK retail outlets (known as the “Total

Consumer Market”, or “TCM”) for the 53-week period ending 2 January 2016 with my

Company’s Penguin publishing division (labelled Penguin Adult) registering an overall

market share of 7% during that period.

 Annexure SMM9 – Spreadsheet of Nielsen BookScan data showing actual sales

figures through the Total Consumer Market for the 53-week period ending 2 January

2016 with Penguin publishing division (labelled Penguin Adult) achieving the third

highest total sales value and total units sold during that period.

 Annexure SMM10 – Screenshot of an analysis of the top 50 bestselling eBooks in the

UK for the period 1 Site 2013 to I March 2016 showing the opponent’s publications

(labelled Penguin which includes all books published by Penguin divisions and

Imprints) with 4 titles in the top 15, an eBook market share of 16% of volume sales, a

10% market share of the overall title count and average monthly eBook sales of

nearly 17,000 units during that period. Furthermore, an article from the Bookseller

published on 29 January 2016 shows the opponent’s post-merger group, Penguin

Random House, achieved a 24% market share in 2015 according to Nielsen

BookScan’s total consumer market data and has topped the digital sales figure charts

from 2012 to 2015.

 Annexure SMM11 – Article from the Bookseller entitled ‘Middle class outpaces Big

Three’ published on 29 January 2016.

 Annexure SMM12 – Two editions of the Times Newspaper for the United Kingdom

dated 12 February 2009 and 20 July 2009 respectively and a promotion the opponent

ran with the Times in which limited edition Penguin triband cover design books were

given away free with a copy of the newspaper.

 Annexure SMM13 – Example of a Penguin Press leaflet that was inserted into books

delivered to bookshops in the UK in 2015.

Decision on Opposition No B 2 580 978 page: 9 of 32

 Annexure SMM14 – Example of the invitation for the Penguin Press Dinner held

annually to promote new titles to the UK media and UK booksellers.

 Annexure SMM15 – Examples of Penguin Press trade catalogues used by Penguin’s

UK sales representatives and distributed to booksellers and the media in the UK for

January —July 2014 and Autumn —Winter 2015.

 Annexure SMM16 – Examples of Penguin General trade catalogues used by

Penguin’s UK sales representatives and distributed to booksellers and the media In

the UK for July — December 2014 and July — December 2015.

 Annexure SMM17 -Example of the Penguin Children’s catalogue used by Penguin’s

UK sales representatives and distributed to bookshops in the UK for 2015.

 Annexure SMM18 – Examples of various promotional posters for Penguin books

distributed for use in national and independent book stores across the UK.

 Annexure SMM19 – Examples of promotional posters for use in UK stores to publicise

book signings by the opponent’s authors.

 Annexure SMM20 – Promotional poster for use in UK stores publicising the book

‘Landmarks’ by Robert Macfarlane by way of a 2016 photography competition to win

a Panasonic Lumix Camera.

 Annexure SMM21 – Further examples of marketing and advertising materials and

campaigns relating to the PENGUIN brand including an article about the Pop Up

Shop at Westfield Shopping Centre in London 2012 and details of a Jamie Oliver

cookery book campaign.

 Annexure SMM22 – Emails from the opponent’s marketing teams reporting on the

media and social media coverage generated at the time.

 Annexure SMM23 – Emails from the Company’s marketing team reporting on the

launch.

 Annexure SMM24 – Extracts from independent surveys; According to a 2013

Publisher Brand Equity Study conducted for Penguin Random House surveying 797

UK adult book buyers, the opponent had the highest unaided awareness of publisher

brands and aided awareness of publisher brands with 65% and 99% respectively of

past month book buyers listing Penguin as a publisher they were most familiar with.

Furthermore, in a 2014 Penguin brand awareness and sentiment survey of 2,554 UK

book buyers aged 17 and over, Penguin brand awareness was measured at 99%.

 Annexure SMM25 – Photographs of the front and back covers and inside pages for a

number of Penguin books and examples obtained from the Wayback Machine

Internet Archive of Penguin Books for sale on the Penguin Website for 2010-2015.

 Annexure SMM26- Photographs of postcard collections featuring covers from the

Penguin Modern Classics Series and Penguin classic triband cover designs series

(the latter is also shown listed for sale on Amazon.co.uk with the date of publication in

the Product details section) and examples obtained from the Wayback Machine

Internet Archive of the same for sale on the Penguin Website in 2013.

 Annexure SMM27 – Photographs of notebooks featuring the Penguin triband cover

designs and an example of the ‘Case-book of Sherlock Homes’ listed for sale on

Amazon.co.uk (with the date of publication in the Product details section) and

examples obtained from the Wayback Machine Internet Archive of the same and

other notebooks for sale on the Penguin Website for in 2011 and 2013.

Decision on Opposition No B 2 580 978 page: 10 of 32

 Annexure SMM28 – Photographs of Penguin Classics pencils and Penguin classic

triband cover pencils and examples obtained from the Wayback Machine Internet

Archive of the same for sale on the Penguin Website in 2011.

 Annexure SMM29 – Photographs of Penguin wrapping paper featuring a montage of

Penguin classic triband covers and a montage of Penguin classic triband covers the

Penguin device and other elements are trademarks and copyright of Penguin Books

Limited and used with kind permission by Wild and Wolf Limited. www.penguin.co.uk’

and examples obtained from the Wayback Machine Internet Archive of the same for

sale on the Penguin Website in 2013.

 Annexure SMM30 – Penguin paper bunting produced to promote the Little Black

Classics range celebrating the opponent’s 80th birthday in 2015; and

 Annexure SMM31 – Penguin classic triband cover playing cards.

 Annexure SMM32 – Printouts from the Art Meets Matter website (now located at

www.impossiblethings.co.uk), photographs of some of the products produced, and

examples obtained from the Wayback Machine Internet Archive of these products for

sale on the Penguin Website in 2012 and current listings for some of the products on

Amazon.co.uk with the date of publication in the Product details section; according to

the opponent it has entered into licensing arrangements for the production of

merchandise bearing the PENGUIN Marks. In the period from 2010-2015, the

opponent has had licences with Art Meets Matter and Wild and Wolf Limited under

which it granted each party the right to use the PENGUIN Marks to manufacture,

market and sell merchandise such as Penguin classic triband cover mugs, tea towels,

canvasses, deckchairs and book bags, pocket journals and wrapping paper.

 Annexure SMM33 – Printouts from the Penguin section of King & McGaw website

(located at www.kingandmcgaw.com) from 2013-2015; according to the opponent it

currently has a licensing arrangement with King & McGaw, one of the UK’s leading art

publishers, which started in 2013. Under the licence, King & McGaw has the right to

produce a range of PENGUIN branded art prints (framed and unframed) and

canvasses featuring classic Penguin triband cover designs.

 Annexure SMM34 – Printouts showing the wallpaper from the Osborne and Little

website and as listed for sale to members of the public on the John Lewis website

(located at www.johnlewis.com); according to the opponent it has had a licensing

arrangement with Osborne and Little since 2012 to produce Penguin Library

Wallpaper which is sold in the UK by the John Lewis Partnership.

 Annexure SMM3S – Copies of the front and back covers for a number of Penguin

audiobooks and examples of the same for sale on the Penguin Website in 2013 from

the Wayback Machine Internet Archive.

 Annexure SMM36 – Screenshots from SoundCloud in respect of the old Penguin

Podcast which ran from 2011 until its re-launch In 2015 but remains accessible on

SoundCloud.

 Annexure SMM37 – Examples of eBooks for sale on the Penguin Website in 2013

from the Wayback Machine internet Archive and screenshots from the UK iTunes

store, showing use of the PENGUIN Marks in relation to eBooks, audiobooks and the

new Penguin Podcasts published within the period 2010- 2015.

 Annexure SMM38 – Printouts from Amazon.co.uk Showing use of the PENGUIN

Marks on various products for sale including audio books (downloadable and on CD),

Kindle edition eBooks and books published in the Penguin Active Reading Series

Decision on Opposition No B 2 580 978 page: 11 of 32

accompanied by CD-ROMs (with the date of publication in the Product details

section);

 Annexure SMM39 – Example listings of a few of the Penguin software applications

‘Apps’ on the UK iTunes and Google Play Stores Published within the period 2011-

2014 as per the date of updates in the app product information sections.

 Annexure SMM40 Is a selection of screenshots from the animated TV series ‘Puffin

Rock’ co-produced by the opponent whose first season began airing in Ireland on 12

January 2015 and is currently available on Netflix UK.

 Annexure SMM41 – Copies of the WHO’S extracts for the domain names

<penguin.co.uk> and <penguinclassics.co.uk> evidencing registration of the same in

the name of the opponent and Penguin Random House Limited respectively and

examples of pages from the Penguin Website and the Penguin Classics Website

dating between 1997 and 2016 obtained from the Internet Archive’s Wayback

Machine search.

 Annexure SMM42 – Webpages showing use of the PENGUIN Marks on the Penguin

Website and products for sale from 2010 -2016 (some examples have been obtained

from the Internet Archive’s Wayback Machine search) and some examples of the

Penguin Newsletter email from December 2013 to January 2016.

 Annexure SMM43 – Printouts of home pages from the period 2010-2015; Penguin

Classics for Schools website (located at http:fiedu.penguinclassics.co.uk) where UK

Schools can purchase Penguin Classics books at exclusively discounted prices;

Penguin Readers Website (located at www.penguinreaders.com); according to the

opponent the Penguin Readers website provides services for both teachers and

students regarding the Penguin Readers and Penguin Active Reading programs, and

the Penguin Rights website provides information regarding current rights deals

regarding Penguin titles.

 Annexure SMM45 -Printouts from the Penguin Website and links to competitions for

the period from 2010 -2015 can be seen on the printouts of the Penguin Website from

the Internet Archive’s Wayback Machine at Annexure SMM42 above. Through the

Penguin Website the opponent also organises competitions related to works by

authors and customers.

 Annexure SMM46 – Screenshots and printouts of listings for some of the opponent’s

Apps on the UK iTunes store and the Google Play UK store.

 Annexure SMM47 – Printouts from www.thepenguinpodcast.blogs.com via the

Internet. Archive’s Wayback Machine for 2011-2015 and screenshots from iTunes,

SoundCloud and the opponent’s main website about the current Penguin Podcasts,

as well as details of the Webby Award a report on Penguin Podcast listening figures.

 Annexure SMM48 – Printouts from the Penguin Books UK YouTube channel

homepage and various examples of videos posted from 2011 – 2016.

 Annexure SMM49 – Printouts and screenshots showing some of the opponent’s digital

products on sale, and extracts from www.yourfry.com and

www.mountimprobable.com.

 Annexure SMM50 – Printouts from the Penguin Schools section of the Penguin

Website, extracts from Penguin Schools ‘resources, examples of the Penguin Schools

newsletter and printouts from the Penguin Schools Twitter showing posts from the

years 2011-2015 and Facebook page showing posts from January — April 2015.

Decision on Opposition No B 2 580 978 page: 12 of 32

 Annexure SMM51 – Printouts from the Internet Archive’s Wayback Machine for the

Penguin Schools section of the Teachit Primary website for 2014-2015 and the

Penguin School section of the Teachit Primary website in 2016, example resources

and a newsletter email.

 Annexure SMM52 – Printouts from author events listings on the Penguin Website from

2010-2014, author Interviews from the ‘On Writing’ section of the Penguin Website,

and extracts from Penguin Live from the Penguin Website for 2014-2016 and

‘Penguin By Design’ on Tumblr from 2013 to 2015.

 Annexure SMM53 – Printouts from the internet movie database IMDB (located at

www.imdb.com) confirming the opponent’s co-producer status and screenshots from

the Episode 1 of the first Topsy and Tim Series as featured on the BBC’s iPlayer.

 Annexure SMM54 – Photos of the Penguin media suite.

 Annexure SMM55 – Printouts from the Internet Archive’s Wayback Machine from the

Delivery Charges and Times section of the Penguin Website for the period 2010 —

2014 confirming the availability of delivery to a wide range of Member States in the

European Union.

 Annexure SMM56 – Printouts from the Internet Archive’s Wayback Machine of the

Delivery Information sections from Amazon.co.uk, the John Lewis and Waterstones

Booksellers at March 2015 showing the availability of European delivery for items

sold via those websites.

 Annexure SMM57 – Breakdowns of the origins of the EU visitors to the Penguin

Website and Penguin Classics Website which show that just under 25% of visitors to

the Penguin Website and just under 30% of visitors to the Penguin Classics Website

came from Member States other than the United Kingdom.

 Annexure SMM58 – Examples of the Penguin International Bestsellers Catalogues

from 2009-2015 along with copy purchase orders for the production of some of the

International Bestsellers Catalogue showing the quantities ordered and the worldwide

(including EU) destinations for their use and distribution by the opponent’s sales

agents.

 Annexure SMM59 – Copy Invoices showing the supply of Penguin books from the

opponent’s UK warehouse to customers in the Netherlands, France, Spain and

Germany in the years 2014 and 2015. According to the opponent the Penguin Books

are indicated by ‘PN’ in the Publisher column.

 Annexure SMM60 – Examples of Penguin Rights Guides produced for book fairs for

the years 2013-2015; according to the opponent 800 Penguin Rights Guides are

printed and distributed annually with digital versions also being sent to over 3000

contacts a year.

 Annexure SMM61 – Example that although local language versions of books are

often outwardly branded with local publisher’s branding, they also often state in the

 Annexure SMM62 – Examples of PENGUIN branded CD-ROMs and PENGUIN

branded USB sticks.

 Annexure SMM63 – Various photographs of (and materials for) promotions and events

within the EU; according to the opponent its promotional activities included a Penguin

promotion at the Anne Frank House Museum in Amsterdam in July 2010, a Penguin

Books display at the Citizen M hotel in Amsterdam in 2012, Penguin English Library

promotions at the Humanitas Bookstore in Vilnius in Lithuania and Dekkers Bookstore

Decision on Opposition No B 2 580 978 page: 13 of 32

in the Netherlands in 2014, an example of a Penguin cake sent annually to certain

Benelux customers, a Penguin Classics window display at Shakespeare and

Company in Paris In 2013, a Penguin Modern Classics promotion run by Alma Artex

in Romania and a Christmas display: by the Haostraten Bookshop in the Netherlands

in December 2014, an author event in 2014, an author event in Brussels in October

2013 and an author event In October 2012 in Poland.

 Annexure SMM64 – Photographs of the opponent’s book sections and promotions at

various bookstores across Germany from 2011 -2012.

 Annexure SMM65 – Photographs of the Penguin stand at the Leipzig Book Fair in

2011 and 2014.

 Annexure SMM66 – Examples of downloadable audiobooks offered for sale on the

website Amazon.de (with listing dates in the product details sections).

 Annexure SMM67 – Examples of downloadable Kindle eBooks offered for sale on the

website Amazon.de and eBooks on the iTunes store for Germany (with listing dates in

the product details sections).

 Annexure SMM68 – Examples of various Apps offered for download from the ‘Tunes

store for Germany (with listing dates In the product details sections)

 Annexure SMM69 – Examples of books offered for sale on the website Amazon.de

(with listing dates In the product details sections).

 Annexure SMM70 – Examples of notebooks offered for sale on the website

Amazon.de (with listing dates in the product details sections).

 Annexure SMM71 – Examples of postcard packs offered for sale on the website

Amazon.de (with listing dates in the product details sections).

 Annexure SMM72 – Examples of Audio CDs offered for sale on the website

Amazon.de (with listing dates in the product details sections).

 Annexure SMM73 – Examples of a book from the Penguin Active Reading series

produced by Pearson Education in association with my company and accompanied

by a CD-ROM offered for sale on the website Amazon.de (with listing dates in the

product details sections).

 Annexure SMM74 – Examples of a book and MP3 Pack from the Penguin Readers

series produced by Pearson Education in association with the opponent offered for

sale on the website Amazon.de (with listing dates in the product details sections).

 Annexure SMM75 – Printouts from various pages of the Penguin Spain website for the

period 2011-2016 (some obtained from the Wayback Machine Internet Archive) and

from the Penguin Italia website as well as Whois records for the related domain

names confirming their ownership by Penguin Books S.A.

 Annexure SMM76 – Review of the launch, promotion and first years operation of

‘Penguin Classic’.

 Annexure SMM77 – Examples of downloadable audiobooks offered for download from

the iTunes store for Spain (with listing dates in the product details sections).

 Annexure SMM78 – Examples of downloadable Kindle eBooks offered for sale on the

website Amazon.es and eBooks from the ‘Tunes store for Spain (with listing dates in

the product details sections).

Decision on Opposition No B 2 580 978 page: 14 of 32

 Annexure SMM79 – Examples of various Apps offered for download from the iTunes

store for Spain {with listing dates in the product details sections).

 Annexure SMM80 – Examples of the Penguin Podcast offered for download from the

iTunes store for Spain (with listing dates in the product details sections).

 Annexure SMM81 – Examples of books offered for sale on the website Amazon.es

(with listing dates in the product details sections).

 Annexure SMM82 – Examples of notebooks offered for sale on the website

Amazon.es (with listing dates in the product details sections)

 Annexure SMM83 – Examples of Audio CDs offered for sale on the website

Amazon.es (with listing dates in the product details sections).

 Annexure SMM84 – example of a book from the Penguin Readers series produced by

Pearson Education in association with the opponent.

 Annexure SMM85 – example of a book and MP3 Pack from the Penguin Readers

series produced by Pearson Education in association with the opponent offered for

sale on the website Amazon.es (with listing dates in the product details sections).

 Annexure SMM86 -examples of audiobooks offered for download from the itunes

stores for Belgium and the Netherlands and offered for sale from Bolcom in the

Netherlands (with listing dates in the product details sections).

 Annexure SMM87 – examples of downloadable Kindle eBooks offered for sale on the

website Amazon.nl and eBooks offered from aol.com in the Netherlands and from the

runes stores for Belgium and the Netherlands (with listing dates in the product details

sections).

 Annexure SMM88 – Examples of various Apps offered for download from the iTunes

store for the Netherlands (with listing dates in the product details sections).

 Annexure SMM89 – Examples of the Penguin Podcast offered for download from the

iTunes stores for Belgium and the Netherlands (with listing dates in the product

details sections).

 Annexure SMM90 – Examples of books offered for sale on the websites

www.nlinac.be for Benelux and Bolcom in the Netherlands (with listing dates in the

product details sections).

 Annexure SMM91 – Examples of notebooks offered for sale on the website Bol.com In

the Netherlands (with listing dates in the product details sections).

 Annexure SMM92 – Examples of postcard packs offered for sale on the website for

sale on the website Bol.com in the Netherlands (with listing dates in the product

details sections).

 Annexure SMM93 – Example of a book and MP3 Pack from the Penguin Readers

series produced by Pearson Education for sale on the website Bol.com in the

Netherlands (with a listing date in the product details sections).

 Annexure SMM94 – Examples of downloadable audiobooks offered for download from

the Tunes store for France (with listing dates in the product details sections);

 Annexure SMM95- Examples of downloadable Kindle eBooks offered for sale on the

website Amazon.fr and eBooks from the ITunes and Google Play stores for France

(with listing dates in the product details sections).

Decision on Opposition No B 2 580 978 page: 15 of 32

 Annexure SMM96 – examples of various Apps offered for download from the iTunes

and Google Play stores for France (with listing dates in the product details sections);

 Annexure SMM97 -Examples of the Penguin Podcast offered for download from the

Tunes store for France (with listing dates in the product details sections);

 Annexure SMM98 – Examples of books offered for sale on the website Amazon.fr

(with listing dates in the product details sections).

 Annexure SMM99 – Examples of notebooks offered for sale on the website

Amazon.fr(with listing dates in the product details sections);

 Annexure SMM100 – Examples of postcard packs offered for sale on the website

Amazon.fr (with listing dates in the product details sections).

 Annexure SMM101 – Examples of Audio CDs offered for sale on the website

Amazon.fr (with listing dates in the product details sections).

 Annexure SMM102 – Example of a book from the Penguin Readers series produced

by Pearson Education in association with the opponent and accompanied by a CD-

ROM offered for sale on the website Amazon.fr (with a listing date in the product

details sections).

 Annexure SMM103 – Example of a book and MPS Pack from the Penguin Readers

series produced by Pearson Education In association with the opponent offered for

sale on the website Amazon.fr (with a listing date in the product details sections).

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in

accordance with its essential function, which is to guarantee the identity of the origin

of the goods or services for which it is registered, in order to create or preserve an

outlet for those goods or services. Genuine use does not include token use for the

sole purpose of preserving the rights conferred by the mark. Furthermore, the

condition of genuine use of the mark requires that the mark, as protected in the

relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax,

EU:C:2003:145 and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

As far as the applicant argues that not all the items of evidence indicate genuine use

in terms of time, place, extent, nature and use of the goods and services for which

the earlier marks are registered, the Opposition Division notes that this argument is

based on an individual assessment of each item of evidence regarding all the

relevant factors. However, when assessing genuine use, the Opposition Division

must consider the evidence in its entirety. Even if some relevant factors are lacking in

some items of evidence, the combination of all the relevant factors in all the items of

evidence may still indicate genuine use.

As far as the witness statements are concerned, Article 10(4) EUTMDR (former

Rule 22(4) EUTMIR, in force before 01/10/2017) expressly mentions written

statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of

use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn

or affirmed written statements or other statements that have a similar effect according

to the law of the State in which they have been drawn up. As far as the probative

value of this kind of evidence is concerned, statements drawn up by the interested

parties themselves or their employees are generally given less weight than

independent evidence. This is because the perception of the party involved in the

dispute may be more or less affected by its personal interests in the matter.

Decision on Opposition No B 2 580 978 page: 16 of 32

However, this does not mean that such statements do not have any probative value

at all. The final outcome depends on the overall assessment of the evidence in the

particular case. This is because, in general, further evidence is necessary to

establish use, since such statements have to be considered as having less probative

value than physical evidence (labels, packaging, etc.) or evidence originating from

independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to

see whether or not the contents of the declaration are supported by the other items of

evidence.

The evidence shows that the places of use are the United Kingdom and several other

member states of the European Union. This can be inferred from the language of the

documents, the currencies mentioned (Pound and Euro) and some addresses,

internet addresses and other references to the UK, Germany Spain, the Benelux and

Poland. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period. Evidence referring to use

made outside the relevant timeframe is disregarded unless it contains conclusive

indirect proof that the mark must have been put to genuine use during the relevant

period of time as well. Events subsequent to the relevant time period may make it

possible to confirm or better assess the extent to which the earlier mark was used

during the relevant time period and the real intentions of the EUTM proprietor at that

time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50).

In the present case, the evidence referring to use outside the relevant period

confirms use of the opponent’s mark within the relevant period. This is because it is

either close in time to the relevant period and/or attests to the longstanding and

continuous use of the mark before and up to the relevant time period.

As regards the extent of use, all the relevant facts and circumstances must be taken

into account, including the nature of the relevant goods or services and the

characteristics of the market concerned, the territorial extent of use, and its

commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the

factors taken into account. Thus, the fact that commercial volume achieved under the

mark was not high may be offset by the fact that use of the mark was extensive or

very regular, and vice versa. Likewise, the territorial scope of the use is only one of

several factors to be taken into account, so that a limited territorial scope of use can

be counteracted by a more significant volume or duration of use.

The Opposition Division notes that while the opponent has filed a vast amount of

documents only few of them directly prove the actual sale of any of the goods and

services in question (such as the invoices in annexures SMM 59 and 60).

Furthermore, whilst the turnover numbers claimed by the opponent are quite

significant, they are not broken down to specific goods and services. Nevertheless,

bearing in mind that the evidence has to be assessed as a whole, the Opposition

Division considers that it is clear from the evidence that the mark has been used in

relation to several of the goods and services in question to a varying extent.

Overall, the evidence shows sufficient information concerning the commercial

volume, the territorial scope, the duration, and the frequency of use of the mark in the

UK and several other EU Member States, such as Germany, Spain, and the Benelux.

Decision on Opposition No B 2 580 978 page: 17 of 32

Therefore, the Opposition Division considers that the opponent has provided

sufficient indications concerning the extent of use of the earlier mark, at least in

respect of part of the goods and services in question (see below).

In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before

01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in

accordance with its function, of use of the mark as registered, or of a variation thereof

according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for

the goods and services for which it is registered.

However, the evidence filed by the opponent does not show genuine use of the trade

marks for all the goods and services covered by the earlier trade marks.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation

to only some of the goods or services for which it is registered it will, for the purposes

of the examination of the opposition, be deemed to be registered in respect only of

those goods or services.

In the present case, the evidence shows genuine use of the trade mark for the

following goods and services:

European Union trade mark registration No 128 768

Class 9 Sound, video and data recordings; computer programs; discs and

records, all bearing sound, video and data.

Class 16 Wrapping paper, books, printed matter, publications; stationery;

photographs; pictures; posters; instructional and teaching materials; book marks;

book ends, calendars and diaries.

Class 41 Publication services.

International trade mark registration No 993 811

Class 9 Compact discs; CD-ROMs; electronic publications; digital media and

recordings; pre-recorded digital media and recordings; audio books; electronic

books; downloadable electronic publications; downloadable digital media and

recordings; downloadable digital media and recordings containing sound, images,

text, information, signals or software; podcasts; video podcasts; electronically

recorded data; computer software; computer programs.

Class 35 The bringing together for the benefit of others of books, CDs, audio

books, audio CDs, eBooks, electronic publications, downloadable electronic

publications, podcasts, blogs, book and gift vouchers, and computer programs, or of

representations or descriptions of any of those goods, so as to enable customers

conveniently to view, to select and to purchase those goods; retail services of a

bookseller; retail services in the fields of books, CDs, audio books, audio CDs,

electronic publications, downloadable electronic publications, eBooks, podcasts,

blogs, book and gift vouchers, and computer programs, all provided by way of stores,

shops and retail outlets, by online catalogue, by way of a general interest web site or

by way of a specialist web site; making available for purchase books, CDs, audio

books, audio CDs, eBooks, electronic publications, downloadable electronic

publications, podcasts, blogs, book and gift vouchers, and computer programs.

Decision on Opposition No B 2 580 978 page: 18 of 32

Class 41 Publishing services; publication of magazines, books and printed

matter; electronic publishing services; providing on-line electronic publications, books

and journals including via the Internet or from the World Wide Web; providing on-line

databases and directories; provision of non-downloadable electronic publications,

digital media and recordings; provision of non-downloadable media and recordings

containing sound, images, text, information, signals or software; book club services;

advice and assistance in the selection of books; supply services for books; supply

services for books to educational establishments, provision of information to

customers on books; library services; cultural activities.

United Kingdom trade mark registration No 2 497 827

Class 9 Compact discs, CD-Roms, electronic publications, digital media and

recordings, pre-recorded digital media and recordings, audio books, electronic

books, downloadable electronic publications, downloadable digital media and

recordings, downloadable digital media and recordings containing sound, images,

text, information, signals or software, podcasts, video podcasts, electronically

recorded data.

Class 16 Printed matter, books, annuals, publications, printed publications,

magazines, newsletters, newspapers, periodicals, journals, catalogues, leaflets,

posters, all relating to books, book products, publishing, or publishing services,

labels for books, pencils, book covers, book marks, photographs, prints, pictures, all

relating to books and/or bearing representations of book titles, calendars, gift wrap,

gift wrap tissue, wrapping paper, note pads, promotional stickers for book covers,

paper signs, banners, charts relating to books and publishing.

Class 35 The bringing together for the benefit of others of books, CDs, audio

books, audio CDs, e-books, electronic publications, downloadable electronic

publications, podcasts, blogs, book and gift vouchers, and computer programs, or of

representations or descriptions of any of those goods, so as to enable customers

conveniently to view, to select and to purchase those goods; retail services

connected with the sale of books, CDs, audio books, audio CDs, electronic

publications, downloadable electronic publications, ebooks, podcasts, blogs, book

and gift vouchers, and computer programs, all provided by way of stores, shops and

retail outlets, by online catalogue, by way of a general interest web site or by way of

a specialist web site.