OPPOSITION DIVISION
OPPOSITION No B 2 633 132
Santiago Marcó Tarrés, Zona Industrial de Morena, 3, 17253 Mont Ras, Spain
(opponent), represented by Isern Patentes y Marcas, S.L., Avenida Diagonal, 63
bis, 2° piso, 08036 Barcelona, Spain (professional representative)
a g a i n s t
Mylan Emea SAS, 117 allée des Parcs, 69800 Saint-Priest, France (applicant),
represented by Cabinet Plasseraud, Immeuble le Rhône Alpes, 235 Bis cours
Lafayette, 69006 Lyon, France (professional representative).
On 17/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 633 132 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 some of the goods and services of
European Union trade mark application No 13 709 043 for the figurative trade mark
, namely against all the goods in Class 16 and some of the services in
Class 35. The opposition is based on European Union trade mark
registration No 1 803 303 for the figurative trade mark and on the trade
name ‘MILAN’ used in the course of trade in Spain. The opponent invoked Article 8(1)
(b) and Article 8(5) EUTMR in relation to the earlier EU trade mark registration and
Article 8(4) EUTMR in relation to the earlier Spanish trade name.
The signs at issue are, therefore, the following:
Decision on Opposition No B 2 633 132 page: 2 of 16
Earlier trade mark
Earlier trade name
MILAN
Earlier rights Contested sign
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 mark on
which the opposition is based, namely European Union trade mark registration
No 1 803 303 .
The contested application was published on 05/10/2015. The opponent was therefore
required to prove that the trade mark on which the opposition is based was put to
genuine use in the European Union from 05/10/2010 to 04/10/2015 inclusive.
The request was submitted in due time and is admissible as the earlier trade mark
was registered more than five years prior to the relevant date mentioned above.
Furthermore, the evidence must show use of the trade mark for the goods on which
the opposition is based, namely the following:
Class 16: Paper; cardboard and goods made from these materials, not included
in other classes; printed matter; bookbinding material; photographs; stationery;
adhesives for stationery or household purposes; artists’ materials; paint brushes;
instructional and teaching material (except apparatus); playing cards; printers’ type;
printing blocks.
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 2 633 132 page: 3 of 16
On 22/06/2017, 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
27/08/2017 to submit evidence of use of the earlier trade mark. On 21/07/2017, the
opponent replied that evidence had already been submitted at earlier stages of the
proceedings and that no further evidence would be sent.
The opponent requested to keep the commercial data contained in Annexes 1, 2 and
7 to 10 of the evidence as confidential vis-à-vis third parties. Therefore, the
Opposition Division will describe the evidence in question only in the most general
terms without divulging any such data.
The evidence is the following:
– Annex 1: Three certificates/affidavits issued by professional associations or
bodies dated June 2015. The opponent explains that they are intended to certify
that the companies ‘MARCO DACHS, SA’ and ‘FACTIS, SA’ belong to the ‘MILAN
Group’, of which the opponent is the President of the Board of Directors and
Chief Executive Officer. These documents also indicate that the production of the
‘MILAN’ erasers started in 1918 and refer to the trade mark ‘MILAN’ as a well-
known trade mark in the stationery sector and to the MILAN Group’ as a
reference in the same field, especially in the manufacture and commercialisation
of erasers. One document issued by an association of auditors certifies that the
sign ‘MILAN’ is used as a trade mark and as a trade name in the stationery
sector, indicates with figures in euros the high turnover of the abovementioned
companies, and certifies that the ‘MILAN Group’ has participated at the ‘Paper
World Fair’ in Frankfurt since 1974 and at the ‘SIPPA’ fair in Paris since 1980.
Furthermore, a list of the international fairs at which the Group has participated
from 1984 to 2015 is provided including fairs in the Netherlands, Germany,
Portugal, Italy and France between 2010 and 2015.
– Annex 2: Printout from the opponent’s website at www.milan.es/en, printed in July
2016. The trade mark is displayed at the top and the following
categories of goods are mentioned: ‘erasers’, ‘pencil sharpener + eraser’,
‘school’, ‘office’, ‘calculators’, ‘fine arts’, ‘paperbook’, ‘collections’ and ‘tablets’.
One page titled ‘The Must by Milan’ shows sharpener-eraser capsules, tablets,
notebooks, ballpoint pens, mechanical pencils. In the section ‘About us’, the
company is referred to as the world’s leading rubber eraser manufacturer,
producing more than 80 different models of erasers. It is also mentioned that its
products and accessories for use in schools, offices and by artists reach more
than 85 countries in the world.
– Annex 3: Extracts from catalogues, in different languages such as
Spanish/English, English/French/Polish, Portuguese/Italian/Polish. One catalogue
entitled ‘Blister range’ is dated 2010 (Blister range) and the ‘General Catalogues’
aredated2011,2013,2014and2015. All clearlyshowthetrademark
on the display stands and the packaging of a very broad range of goods (and in
some cases on the goods themselves). These goods are the following: erasers
(of many different types), scissors, calculators, sharpeners (for pencils and for
erasers), ballpoint pens, fluo markers, pencils, mechanical pencils, felt-tip pens,
adhesive tape for stationery purposes and for packaging purposes, sticky notes,
correctors, staplers, clips, pins, pencil leads, chalks, chalk holders, paint, paint
brushes, cutters, pencil cases.
Decision on Opposition No B 2 633 132 page: 4 of 16
– Annex 4: The first page of a list of the 150 000 results from a search on the
expression ‘gomas Milan’ (‘Milan’ erasers) on the Google search engine.
According to the opponent, the fact that the results on this first page concern its
own trade mark shows the intensity of the use of the trade mark MILAN in Spain
and its recognition by the Spanish consumers.
– Annex 5: Image results corresponding to the abovementioned search showing
erasers and sharpeners bearing the trade mark or .
– Annex 6: Six online press articles (from either blogs or online magazines):
Retroyonkis (date not legible), www.madrid.mobi (undated), www.rosaspage.com
(undated), www.revistavanityfair.es (04/03/2015), www.quees.es (23/11/2013),
www.eljueves.es (23/01/2013). Some are fully dedicated, and even entitled after,
the ‘MILAN’ erasers whereas others only refer to these goods, which, in most
articles are referred to as emblematic objects for the school children of the years
in the 1980s in Spain. One article indicates that ‘erasers’ sold in Spain have a
familiar name for millions of persons namely ‘Milan’. The article from
www.eljueves.com, entitled ‘Milan, the son of Shakira and Piqué was born’,
shows a photograph of the singer Shakira and of the soccer player Gérard Piqué
holding hands and with a big ‘MILAN’ eraser in their arms.
– Annex 7: Decision of appeal dated 29/03/2016 issued by the Spanish Trade Mark
and Patent Office, in Spanish. According to the opponent, this decision rejects the
trade mark application ‘MYLAN GENERICOS’ for goods in Class 16 on the basis
of the reputation of the earlier trade mark of the present proceedings registered
for goods in Class 16.
– Annex 8: 38 invoices dated 2010 to 2015, all but the last two within the relevant
period, (2 for 2010, 9 for 2011, 6 for 2012, 6 for 2013, 7 for 2014, 8 for 2015)
issued by the company FACTIS S.A. in the province of Girona to the attention of
companies in different towns and regions of Spain (Madrid, Soria, Giron, Burgos,
Vitoria, Albacete, Toledo, Oviedo, Santander, Seville, Logrono, Ciudad Real, etc.).
The trade mark appears in the right part of the header (and the
company name ‘FACTYS S.A.’ in the left part of the header) which makes it clear
that all goods mentioned are marketed under that trade mark. In addition, the
term ‘MILAN’ appears in the description of some of those goods and where it
does not appear, the code can often be found in one of the submitted catalogues
(for instance the goods referred to in the invoice of 13/12/2010 as ‘blister cajita
tizas blancas + colores’ with code BWM9167 are displayed as ‘MILAN’ chalks in
one of the catalogues, those referred to as ‘blister calculadora 8 dígitos azúl’ with
code 150208 BBL in an invoice of 23/06/2011 also appear in one of the
catalogues as a ‘MILAN’ calculator; the same goes for the ‘expositor 36 rollos’
with code 80217 which corresponds to adhesive tape clearly bearing the trade
mark ‘MILAN’ in one catalogue). The goods in the invoices are stationery items
corresponding to those mentioned above, inter alia pens, pencils, markers,
correctors, paints, paint brushes, erasers, staplers, chalks, adhesive tape,
sharpeners, sticky notes, as well as calculators and scissors.
– Annex 9: Internal accounting document showing the gross sales of the
opponent’s ‘MILAN’ products for the years 2010 to 2015 in Spain and in the EU
(excluding Spain), in relation to office and school items. It shows high and
increasing volumes of sales in both Spain and the rest of the countries of the EU.
A breakdown by country is provided giving the volumes of sales in 25 countries of
Decision on Opposition No B 2 633 132 page: 5 of 16
the EU, the highest being in Romania and Poland followed by the UK, Ireland,
Portugal, etc.
– Annex 10: Documents, which according to the opponent, indicate the presence of
the trade mark ‘MILAN’ at fairs in the field of school and office items held in Spain
and other EU countries during the years 2011-2015. Only the written indication by
the opponent next to each photograph mentions the name and the date of the
fairs in question (in Italy, Germany, Spain, etc., in the period between 2010 and
2015). The opponent also provides invoices from suppliers to its attention related
to the installation, rental and maintenance/cleaning of its stands at several fairs
(in Germany, from 2009 to 2013, Italy in 2014 and 2015, Spain in 2016, France
in 2015). The goods presented at those fairs, as visible on some of the
photographs, are items of stationery and calculators.
The applicant argues that the opponent did not submit translations of some of the
evidence of use, in particular those of the invoices, and that therefore this evidence
should not be taken into consideration. However, the opponent is not under any
obligation to translate the proof of use, unless it is specifically requested to do so by
the Office (Article 10(6) EUTMDR, former Rule 22(6) EUTMIR in force before
01/10/2017). In the present case, taking into account the entirety of the evidence
submitted, in particular the catalogues and that some of them are available in both
English and Spanish, the Opposition Division considers that there is no need to
request a translation. Furthermore, as will be seen below, this decision of the Office
does not prejudice the applicant as far as the final outcome of the opposition is
concerned.
The applicant criticises each and every annex individually. 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.
The evidence, for instance the invoices and the catalogues, clearly refer to use of the
trade mark in Spain and there are convincing indications of some use in other
countries of the EU (such as the participation in professional fairs, the fact that the
catalogues are available in Spanish and other languages of the EU, the detailed
information concerning the sales in Spain and many other countries of the EU).
Therefore, the evidence relates to the relevant territory.
Most of the evidence is dated within the relevant period.
The invoices reflect sales of many different items of stationery during the entire
relevant period, to various customers across the entire Spanish territory. This
provides the Opposition Division with sufficient information concerning the
commercial volume, the territorial scope, the duration, and the frequency of use.
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.
The catalogues and the invoices unmistakably show that the mark has been used in
accordance with its function.
Decision on Opposition No B 2 633 132 page: 6 of 16
As to the issue of whether or not the earlier trade mark is used as registered, the
applicant argues that the earlier mark as registered is only displayed on few of the
goods presented in the catalogues (specific erasers). It is true that, on most
goods/packaging, the trade mark is or , not the earlier
mark . According to Article 18(1), second subparagraph, point (a),
EUTMR, the following will also constitute use within the meaning of paragraph 1: use
of the European Union trade mark in a form differing in elements that do not alter the
distinctive character of the mark in the form in which it was registered, regardless of
whether or not the trade mark in the form as used is also registered in the name of
the proprietor. When examining the use of an earlier registration for the purposes of
Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess
whether or not the use of the sign constitutes genuine use of the earlier mark as far
as its nature is concerned.
In the present case, the differences are only in the specific depiction/colours of the
letters that form the word ‘MILAN’ whereas the word itself is the same. This is a
merely decorative aspect which does not affect the distinctive character of the trade
mark. Neither does the addition of the small ® symbol, which is just an indication
that the trade mark in question is registered.
In view of the above, the Opposition Division considers that the evidence does show
use of the sign as registered within the meaning of Article 18(1), second
subparagraph, point (a), EUTMR.
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).
Taking into account the evidence in its entirety, the evidence submitted by the
opponent is sufficient to prove genuine use of the earlier trade mark during the
relevant period in the relevant territory.
However, the evidence filed by the opponent does not show genuine use of the trade
mark for all the goods for which it is registered and on which the opposition is based,
namely:
Class 16: Paper; cardboard and goods made from these materials, not included
in other classes; printed matter; bookbinding material; photographs; stationery;
adhesives for stationery or household purposes; artists’ materials; paint brushes;
instructional and teaching material (except apparatus); playing cards; printers’ type;
printing blocks.
The category of ‘stationery’ for which the earlier mark is registered refers to paper,
paper goods and other materials used for writing and related accessories. It is
apparent that the trade mark has been used for a broad variety of stationery items
such as notebooks, writing instruments (pens, pencils) and other related items such
as erasers and sharpeners, etc. and genuine use is therefore considered to be
proven for the broad category of stationery in its entirety.
Decision on Opposition No B 2 633 132 page: 7 of 16
The evidence also leaves no doubt as to the genuine use of the trade mark in relation
to artist’s materials (such as colouring pencils and paints) and paint brushes.
The evidence also shows use of the earlier mark in relation to some goods made of
paper/cardboard, namely sticky notes and notebooks of different kinds. Such goods
also belong to the category of stationery. In this respect, it is noted that the headings
of the classes do not constitute a system in which goods or services included in one
category are precluded from also forming part of another class or category (see in
this respect 21/10/2014, T-453/11, Laguiole, EU:T:2014:901, § 88). In the present
case, notebooks and sticky notes are the only goods of paper/cardboard shown in
the evidence. In particular, the evidence does not refer to other goods of
paper/cardboard that would also be included in Class 16 and not already covered by
the category of stationery (such as, for instance, paper napkins or paper tissues).
Therefore, in the present case, although the genuine use of the earlier mark for those
specific items of paper/cardboard, is already acknowledged by accepting genuine
use for stationery items as a whole, the Opposition Division finds that genuine use
must also be granted for goods made of paper/cardboard, namely sticky notes and
notebooks bearing in mind that the meaning of the word ‘namely’ is exclusive and
indicates that protection concerns only these specific goods in the category.
As regards adhesives, the evidence mainly refers to adhesive tape for stationery
purposes but the catalogues also show adhesive tape for household purposes (for
packaging) and the difference between these goods is so subtle that there is no point
in considering that genuine use is proven for the one and not for the other. Therefore,
genuine use is proven for adhesives for stationery and household purposes.
Nevertheless, the evidence does not refer to paper, cardboard, printed matter,
bookbinding material, photographs, instructional and teaching materials (except
apparatus); playing cards; printer’s type; printing blocks and genuine use is therefore
not proven for these goods. It is important to note that in one catalogue, one of the
goods displayed is a set of colouring pencils the photograph of which shows that the
set includes sheets with images for colouring, which also bear the trade mark
’MILAN’. However, the Opposition Division is of the opinion that this does not justify
accepting genuine use for ‘printed matter’/’teaching materials’ to the extent that it is
clear from the evidence that the colouring sheets in question are not sold
independently from the pencils and use for these goods is therefore covered by the
broad category of stationery. Likewise, the type of notebooks and the school supplies
displayed in the evidence are not teaching and instructional materials (except
apparatus) but just school supplies which belong to the category of stationery.
It is noted, finally, that the evidence shows that the mark has been used for some
goods that do not fall within any of the categories for which the earlier mark is
registered, such as calculators (which belong to Class 9) or scissors (which belong to
Class 8). Genuine use cannot be granted for such goods, for which the earlier trade
mark has no protection.
In view of the above, the evidence shows genuine use of the trade mark for the
following goods:
Class 16: Goods made from paper or cardboard namely notebooks and sticky
notes; stationery; adhesives for stationery or household purposes; artists’ materials;
paint brushes.
Decision on Opposition No B 2 633 132 page: 8 of 16
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.
Therefore, the Opposition Division will only consider the abovementioned goods in its
further examination of the opposition.
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.
a) The goods and services
The goods on which the opposition is based and for which genuine use has been
proven are the following:
Class 16: Goods made from paper namely notebooks and sticky notes;
stationery; adhesives for stationery or household purposes; artists’ materials; paint
brushes.
The contested goods and services are the following:
Class 16: Printed matters, teaching and instructional materials (excluding
apparatus), books, magazines, brochures; periodicals, printed guides;
methodological documents (printed matters); all these goods being intended for
presenting medical, pharmaceutical or parapharmaceutical contents and information.
Class 35: Commercial information and consulting services; market studies;
statistic information and statistic works services; advertising; promotional or
advertising operations; business consulting services; business information or
intelligence services; consulting services in the field of drugstore management.
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,
goods or services are not regarded as being similar to or dissimilar from each other
on the ground that they appear in the same or different classes under the Nice
Classification.
The relevant factors relating to the comparison of the goods or services include, inter
alia, the nature and purpose of the goods or services, the distribution channels, the
sales outlets, the producers, the method of use and whether they are in competition
with each other or complementary to each other.
Decision on Opposition No B 2 633 132 page: 9 of 16
Contested goods in Class 16
The contested goods consist of printed matters, of specific items which clearly fall
within the category of printed matter (books, magazines, brochures, periodicals,
printed guides); methodological documents (printed matters) and of teaching and
instructional materials (excluding apparatus). As regards the latter, the fact that they
are, like the printed matter, limited to those ‘intended for presenting medical,
pharmaceutical or pharmaceutical or parapharmaceutical contents and information’
makes it clear that they consist of printed matter as well. As previously mentioned,
the structure of the Nice classification does not preclude that some items may belong
to several general indications in one class.
In view of the above, all of the contested goods refer to printed matter in the fields of
pharmacy/parapharmacy/medicine. These goods are intended for teaching/divulging
specialised content and are issued by printing companies, publishers, or companies
in the educational or health sectors (hospitals, scientific universities).
These goods and the opponent’s stationery, artist’s materials and adhesives, paper
goods namely sticky notes and notebooks clearly differ in their natures, purposes,
producers and usual distribution channels. The fact that it is not excluded that
magazines, including medical magazines, may be found in some bookshops or
stationer’s shops together with stationery items and that these goods are intended for
the general public is not enough to counteract the above-mentioned differences and
the fact that there is no link of complementarity or competition between them. It is
noted in this respect that the factors of the distribution channels and the relevant
public (especially when goods and services target the general public), together with
the method of use are usually considered to be factors of less weight than the usual
commercial origin, the purpose, the nature, the complementarity and the link of
competition (see in this respect the guidelines for examination of European Union
trade mark, part C, Opposition, section 2, double identity and likelihood of confusion
chapter 2, comparison of goods and services, section 3.3.2. Importance of each
factor).
For the sake of completeness it is also noted that the opponent does not adduce any
specific argument in relation to the goods at issue since, as regards the comparison
of goods and services, it just establishes that the contested specific printed matter is
included in, and therefore identical to, the earlier mark’s general category of printed
matter. However, the genuine use of the earlier mark for printed matter has not been
proven. As previously mentioned, the only goods in the evidence that may be
considered to be printed matter are colouring sheets. Had the use been granted for
such goods, the result of the comparison would be the same because the differences
in purposes, natures, producers would still exist as well as the absence of a link of
complementarity or competition.
Therefore, the contested goods in Class 16 are dissimilar to the opponent’s goods.
Contested services in Class 35
The contested services of commercial information and consulting services; market
studies; statistic information and statistic works services; advertising; promotional or
advertising operations; business consulting services; business information or
intelligence services; consulting services in the field of drugstore management are
clearly further apart from the opponent’s goods in Class 16. This is because goods
are articles of trade, wares, merchandise or real estate. Their sale usually entails the
transfer of title in something physical, i.e. movables or real estate. Services, on the
Decision on Opposition No B 2 633 132 page: 10 of 16
other hand, consist of the provision of intangible activities. From this divergent
nature, it follows that the method of use of goods and services is inherently dissimilar.
Furthermore, there are no connections between those particular services, which are
services intended for helping companies manage their businesses and promote their
goods or image and the earlier stationery, adhesives, artist’s materials and goods
made of paper namely sticky notes and notebooks. In particular, there is no relation
of complementarity or competition, or any coincidence in terms of purposes,
producers and distribution channels that could produce any degree of similarity.
Therefore, the contested services in Class 35 are also dissimilar to the opponent’s
goods.
It is noted that, in its observations in support of a likelihood of confusion under Article
8(1)(b) EUTMR, the opponent argues that the contested services in Class 35 are
also similar to the wholesale and retail services for which the earlier trade name
invoked is registered. However, the earlier trade name is not an acceptable right
under Article 8(1)(b) EUTMR and has indeed been duly invoked by the opponent in
relation to Article 8(4) EUTMR in the notice of opposition. The opposition under
Article 8(4) EUTMR will be examined subsequently.
b) Conclusion
According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a
condition for a finding of likelihood of confusion. Since the goods and services are
clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not
fulfilled, and the opposition must be rejected insofar it is based on this article.
This finding would still be valid even if the earlier trade mark were to be considered
as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods
and services cannot be overcome by the highly distinctive character of the earlier
trade mark, the evidence submitted by the opponent in this respect does not alter the
outcome reached above.
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.
Decision on Opposition No B 2 633 132 page: 11 of 16
Therefore, the grounds for 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: 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.
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
arguments 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
injury is indeed likely in the ordinary course of events.
In the present case, the opponent refers to detriment and unfair advantage and
merely argues in a very general manner that ‘unfair advantage’ to its earlier trade
mark is ‘inevitable’ in view of the close connection between the goods at issue, the
high reputation of its mark and the fact that the contested trade mark is highly similar
to its own. However, it does not provide any specific reason why use of the contested
mark in the specific context of the goods at issue would be detrimental to the
Decision on Opposition No B 2 633 132 page: 12 of 16
distinctive character or repute of the contested sign or otherwise what the unfair
advantage would consist of.
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 and 139 and the case-law cited). As regards the strength
of the reputation and the degree of distinctive character of the earlier mark, the Court
has already held that 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, NASDAQ, EU:C:2008:655, § 69).
Likewise, the Court has established that the more immediately and strongly the
earlier mark is brought to mind by the later mark, the greater the likelihood that the
current or future use of the later mark is taking unfair advantage of, or is detrimental
to, the distinctive character or the repute of the earlier mark (27/11/2008, C-252/07,
NASDAQ, EU:C:2008:655, § 67).
However, even though consumers may 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).
Article 8(5) EUTMR is not intended to prevent the registration of all marks identical or
similar to a mark with reputation. This is confirmed by Rule 19(2)(c) EUTMIR (in the
version in force at the time of commencement of the adversarial part), 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, the opponent’s statements are so unspecific and vague that they
no doubt must be dismissed as insufficient to establish a risk of injury.
Whilst the opponent does not need to submit evidence of actual detriment, it must
convince the Office by adducing evidence of a serious future risk — which is not
merely hypothetical.
The opponent should have submitted evidence, or at least put forward a coherent
line of arguments 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 injury is indeed likely in the ordinary course of events.
Furthermore, although the Opposition Division does not find it strictly necessary to
establish whether the earlier mark is reputed, given the absence of any specific
arguments in support of an unfair advantage that would be taken of or detriment
caused to the earlier mark, it finds it useful to indicate that the evidence submitted
does not in any case support a finding of high reputation as the opponent suggests.
The evidence, which is the same as that listed above in relation to the proof of the
genuine use of the earlier mark, does not indicate that the earlier mark enjoys high
recognition on the part of the relevant public but just rather points to intensive and
Decision on Opposition No B 2 633 132 page: 13 of 16
regular use of the trade mark in Spain for some goods and to some degree of
recognition. Indeed the documents submitted are even not conclusive regarding a
reputation as regards most of the goods for which such reputation is claimed
because they do not provide sufficient information as to the public’s awareness of the
trade mark for those goods, or even as regards the market share or a leading
position of the earlier mark. The catalogues and the participation at trade fairs do not
amount to such an intense promotional activity as to necessarily infer recognition and
reputation. At most, the evidence indicates some degree of reputation (in no case
exceptional or even high reputation) for erasers. As regards these goods, the
opponent’s statements on its own website that it occupies a leading position on the
global market are corroborated by the press articles but only to some extent given
that those articles concern the Spanish public only and that no information has been
provided as to the nature and reach of those articles. No information on market share
is available either. Finally, erasers are not closely connected to, but on the contrary
substantially differ from, the applicant’s printed matter related to medicine and
pharmacy and there seems to be no good reason to assume that use of the
contested trade mark in relation to printed matter in the fields of medicine and
pharmacy will result in the detriments foreseen in Article 8(5) EUTMR occurring.
All of the above makes it clear that the opponent’s statement that it is inevitable that
unfair advantage would be taken of its earlier trade mark in view of the close
connection between the goods at issue and the high reputation of its mark is not well
founded. An unfair advantage is not, in this case, readily foreseeable even in the
presence of highly similar signs and the opponent should have provided a coherent
line of arguments in relation to the same. Although potential detriment or unfair
advantage cannot be completely excluded, this is, in itself, insufficient, as explained
above.
As far as the decision of the Spanish Office in Annex 7 is concerned, which according
to the opponent acknowledges the reputation of the earlier Spanish trade mark, it
must be noted that the European Union trade mark system is an autonomous
system, consisting of a set of rules and objectives that are specific, and applied
independently of any national system (17/12/2010, T-192/09, Seve Trophy,
EU:T:2010:553, § 79). At any rate, the decision in question does not clearly establish
the reputation of the earlier mark or address the issue of the detriment to the earlier
mark’s distinctive character or reputation.
According to Rule 19(2)(c) EUTMIR (in the version in force at the time of
commencement of the adversarial part), 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.
The requirements in relation to the application of Article 8(5) EUTMR 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).
Given that the opponent did not establish, with sufficient evidence or arguments, 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.
Decision on Opposition No B 2 633 132 page: 14 of 16
For the sake of completeness it is noted that there is no need to compare the signs
because, on the one hand, the opposition under Article 8(5) EUTMR cannot succeed
as long as the requirement of the proof of the detriment to the earlier mark is not
fulfilled and, on the other hand, as mentioned just above, the argument for the
detriment is insufficient irrespective of the degree of similarity between the signs.
The examination proceeds with the opponent’s claim under Article 8(4) EUTMR.
NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF
TRADE — ARTICLE 8(4) EUTMR
The opposition is based on the earlier trade name ‘MILAN’ used in the course of
trade in Spain in relation to wholesale and retail services, and via global computer
networks in relation to paper and stationery supplies, drawing and art materials.
According to Article 8(4) EUTMR, upon opposition by the proprietor of a
non-registered trade mark or of another sign used in the course of trade of more than
mere local significance, the trade mark applied for will not be registered where and to
the extent that, pursuant to the Union legislation or the law of the Member State
governing that sign:
(a) rights to that sign were acquired prior to the date of application for registration
of the European Union trade mark, or the date of the priority claimed for the
application for registration of the European Union trade mark;
(b) that sign confers on its proprietor the right to prohibit the use of a subsequent
trade mark.
Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following
requirements:
the earlier sign must have been used in the course of trade of more than local
significance prior to the filing of the contested trade mark;
pursuant to the law governing it, prior to the filing of the contested trade mark, the
opponent acquired rights to the sign on which the opposition is based, including
the right to prohibit the use of a subsequent trade mark;
the conditions under which the use of a subsequent trade mark may be prohibited
are fulfilled in respect of the contested trade mark.
These conditions are cumulative. Therefore, where a sign does not satisfy one of
those conditions, the opposition based on a non-registered trade mark or other signs
used in the course of trade within the meaning of Article 8(4) EUTMR cannot
succeed.
The right under the applicable law
According to Article 95(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 will restrict this examination to the facts, evidence
and arguments submitted by the parties and the relief sought.
Decision on Opposition No B 2 633 132 page: 15 of 16
According to Rule 19(2)(d) EUTMIR (in the version in force at the time when the
adversarial part of the proceedings started), if the opposition is based on an earlier
right within the meaning of Article 8(4) EUTMR, the opposing party must provide
evidence of its acquisition, continued existence and scope of protection.
Therefore, the onus is on the opponent to submit all the information necessary for the
decision, including identifying the applicable law and providing all the necessary
information for its sound application. According to case-law, it is up to the opponent
‘… to provide OHIM not only with particulars showing that he satisfies the necessary
conditions, in accordance with the national law of which he is seeking application …
but also particulars establishing the content of that law’ (05/07/2011, C-263/09 P, Elio
Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the
Opposition Division to determine safely that a particular right is provided for under the
law in question, as well as the conditions for acquisition of that right. The evidence
must further clarify whether the holder of the right is entitled to prohibit the use of a
subsequent trade mark, as well as the conditions under which the right may prevail
and be enforced vis-à-vis a subsequent trade mark.
As regards national law, the opponent must cite the provisions of the applicable law
on the conditions governing acquisition of rights and on the scope of protection of the
right. The opponent must provide a reference to the relevant legal provision
(Article number, and the number and title of the law) and the content (text) of the
legal provision either as part of its submission or by highlighting it in a publication
attached to the submission (e.g. excerpts from an official journal, a legal commentary
or a court decision). As the opponent is required to prove the content of the
applicable law, it must provide the applicable law in the original language. If that
language is not the language of the proceedings, the opponent must also provide a
complete translation of the legal provisions invoked in accordance with the standard
rules of substantiation.
Furthermore, the opponent must submit appropriate evidence of fulfilment of the
conditions of acquisition and of the scope of protection of the right invoked, as well as
evidence that the conditions of protection vis-à-vis the contested mark have actually
been met. In particular, it must put forward a cogent line of arguments as to why use
of the contested mark would be successfully prevented under the applicable law on
the basis of the earlier sign invoked.
In the present case, the opponent did not submit any information on the legal
protection granted to the type of trade sign invoked by the opponent, namely a trade
name in Spain. The opponent did not submit any information on the possible content
of the rights invoked or the conditions to be fulfilled for the opponent to be able to
prohibit the use of the contested trade mark under the Spanish law on the basis of
this sign.
Therefore, the opposition is not well founded under Article 8(4) EUTMR.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the
applicant in the course of these proceedings.
Decision on Opposition No B 2 633 132 page: 16 of 16
According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the
applicant are the costs of representation, which are to be fixed on the basis of the
maximum rate set therein.
The Opposition Division
Frédérique SULPICE Catherine MEDINA Sam GYLLING
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.