OPPOSITION DIVISION
OPPOSITION No B 2 756 107
R.M.P., 16 rue du Dôme, 92100 Boulogne-Billancourt, France (opponent),
represented by Markplus International, 39 rue Fessart, 92100 Boulogne-Billancourt,
France (professional representative)
a g a i n s t
Base.Detall Sport, S.A., Sancho de Avila 89 – 3º, 08018 Barcelona, Spain
(applicant), represented by J.M. Toro S.L.P., Viriato 56 – 1º izda, 28010 Madrid,
Spain, (professional representative).
On 15/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 756 107 is partially upheld, namely for the following
contested goods and services:
Class 16: Leaflets, forms, catalogues, adhesive labels, plastic materials for
packaging (not included in other classes); publications.
Class 35: Advertising; business management.
Class 41: Education; providing of training; entertainment; sporting and
cultural activities.
Class 42: Scientific and technological services and research and design
relating thereto; design and development of computer hardware
and software.
2. European Union trade mark application No 15 355 324 is rejected for all the
above goods and services. It may proceed for the remaining goods and
services
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
Decision on Opposition No B 2 756 107 page: 2 of 14
REASONS
The opponent filed an opposition against all the goods and services of European
Union trade mark application No 15 355 324 for the figurative mark , namely
against the goods and services in Classes 16, 25, 28, 35, 41 and 42. The opposition
is based on European Union trade mark trade mark registration No 7 317 456 for the
word mark ‘BE’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.
LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the
goods or services in question, under the assumption that they bear the marks in
question, come from the same undertaking or, as the case may be, from
economically linked undertakings. Whether a likelihood of confusion exists depends
on the appreciation in a global assessment of several factors, which are
interdependent. These factors include the similarity of the signs, the similarity of the
goods and services, the distinctiveness of the earlier mark, the distinctive and
dominant elements of the conflicting signs, and the relevant public.
a) The goods and services
The goods and services on which the opposition is based are the following:
Class 16: Magazines, journals, publications; plastic materials for packaging,
namely bags.
Class 35: Advertising, for the promotion of miscellaneous goods and services, in
particular in the fields of fashion (fashion articles and accessories,
styling, shows), beauty and hygiene (cosmetics, soaps, perfumery
preparations, sanitary preparations, beauty care, body care and
massage, relaxation services and thalassotherapy), entertainment and
culture (arranging shows and events in the fields of cinema, theatre,
music, forums and meetings, music compilations and mood
compilations, digital images and sounds, games, playthings); on-line
advertising on a computer network; subscriptions to electronic
newspapers, magazines and publications available and searchable
via and on the Internet; promotion (for others); services relating to a
business promotion activity in all its forms, in particular
recommendation, sponsorship, patronage, commercial sponsorship
operations and promotional information campaigns relating to
miscellaneous goods and services, in particular in the field of fashion
(fashion articles and accessories, styling, shows), beauty and hygiene
(cosmetics, soaps, perfumery preparations, sanitary preparations,
beauty care, body care and massage, relaxation services and
thalassotherapy), entertainment and culture (arranging shows and
events in the fields of cinema, theatre, music, forums and meetings,
music compilations and mood compilations, digital images and
sounds, games, playthings), sport; presentation of goods on all means
of communication for retail sale.
Decision on Opposition No B 2 756 107 page: 3 of 14
Class 38: Press agencies; transmission of messages; broadcasting of programs;
providing Internet chat rooms; operating online discussion forums and
chat rooms.
Class 41: Entertainment; cultural events; public recreation (entertainment);
publishing of texts (except publicity texts), illustrations, books,
journals, newspapers, periodicals, magazines and publications of all
kinds (except for publicity purposes) and in all forms, including
electronic and digital publications; exploitation of online non
downloadable electronic publications; organisation of competitions;
organization of exhibitions for cultural or educational purposes.
Class 42: Providing search engines for the internet.
The contested goods and services are the following:
Class 16: Leaflets, Forms, catalogues, adhesive labels, plastic materials for
packaging (not included in other classes); publications.
Class 25: Apparel, footwear, headgear.
Class 28: Games and playthings; Gymnastic and sporting articles not included
in other classes.
Class 35: Advertising; business management; business administration; office
functions; sale in shops, door-to-door sales and sale via global
computer networks of sporting articles and accessories.
Class 41: Education; providing of training; entertainment; sporting and cultural
activities.
Class 42: Scientific and technological services and research and design relating
thereto; industry analysis and research services; Design and
development of computer hardware and software.
An interpretation of the wording of the list of goods and services is required to
determine the scope of protection of these goods and services.
The terms ‘in particular’ and ‘including’, used in the opponent’s list of goods and
services, indicate that the specific goods and services are only examples of items
included in the category and that protection is not restricted to them. In other words, it
introduces a non-exhaustive list of examples (see the judgment of 09/04/2003,
T-224/01, Nu-Tride, EU:T:2003:107).
However, the term ‘namely’ used in the opponent’s list of goods and services to show
the relationship of individual goods and services with a broader category, is exclusive
and restricts the scope of protection only to the specifically listed goods and services.
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 2 756 107 page: 4 of 14
Contested goods in Class 16
Publications are identically contained in both lists of goods.
The contested leaflets, forms, catalogues are included in the broad category of the
opponent’s publications. Therefore, they are identical.
The contested plastic materials for packaging include, as a broader category the
opponent’s plastic materials for packaging, namely bags. Since the Opposition
Division cannot dissect ex officio the broad category of the contested goods, they are
considered identical to the opponent’s goods.
The contested adhesive labels are similar to a low degree to the opponent’s plastic
materials for packaging, namely bags as they can coincide in end user and
distribution channels. Furthermore they are complementary.
Contested goods in Classes 25 and 28
According to the opponent the goods in Classes 25 and 28 are similar to the
opponent’s advertising, for the promotion of miscellaneous goods and services, in
particular in the fields of fashion; arranging shows and events in the fields of games,
playthings); commercial sponsorship operations and promotional information
campaigns relating to miscellaneous goods and services, in particular in the field of
sport.
However, the Opposition Division points out that all these services are services
related to advertising. Advertising services consist of providing others with assistance
in the sale of their goods and services by promoting their launch and/or sale, or of
reinforcing a client’s position in the market and acquiring competitive advantage
through publicity. Many different means and products can be used to fulfil this
objective. These services are provided by specialist companies, which study their
client’s needs, provide all the necessary information and advice for marketing the
client’s goods and services, and create a personalised strategy for advertising them
through newspapers, web sites, videos, the internet, etc.
Advertising services are fundamentally different in nature and purpose from the
manufacture of goods or the provision of many other services. The fact that some
goods or services may appear in advertisements is insufficient for finding similarity.
Therefore, all the above listed opponent services as well as all the remaining to
advertising related services in Class 35 are dissimilar to the goods or services being
advertised, in the case at hand, all the contested goods in Classes 25 and 28.
These goods are furthermore, dissimilar to the remaining opponent’s services. By
their nature services are generally dissimilar to goods. Their nature is different, since
goods are tangible whereas services are intangible. They will be provided by different
manufacturers and providers whilst targeting different publics via different channels.
In addition, they are neither complementary nor in competition. Therefore, the
contested goods in Classes 25 and 28 are dissimilar to the opponent services in
Classes 35, 38, 41 and 42.
Besides, the contested goods in Classes 25 and 28 and the opponent’s goods in
Class 16 are also dissimilar. They are not provided by the same producers, they have
very different natures, purposes and methods of use. At most some of the goods may
appear in different departments of large department shops or supermarkets, but
these goods are not usually displayed side by side. None of the goods are
Decision on Opposition No B 2 756 107 page: 5 of 14
interchangeable or in competition with one another. The Opposition Division cannot
see either an essential or a significant connection between the goods at hand.
Contested services in Class 35
Advertising is identically contained in both lists of services (including synonyms).
The contested services of business management are considered similar to a low
degree to the opponent’s advertising.
Advertising services consist of providing others with assistance in the sale of their
goods and services by promoting their launch and/or sale, or of reinforcing a client’s
position in the market and acquiring competitive advantage through publicity. Many
different means and products can be used to fulfil this objective. These services are
provided by specialist companies, which study their client’s needs, provide all the
necessary information and advice for marketing the client’s goods and services, and
create a personalised strategy for advertising them through newspapers, web sites,
videos, the internet, etc.
Business management services are usually rendered by specialist companies such
as business consultants. These companies gather information and provide tools and
expertise to enable their customers to carry out their business or provide businesses
with the necessary support to acquire, develop and expand market share. The
services include activities such as business research and assessments, cost and
price analyses, organisational consultancy and any consultancy, advisory and
assistance activity that may be useful in the management of a business, such as
advice on how to efficiently allocate financial and human resources, improve
productivity, increase market share, deal with competitors, reduce tax bills, develop
new products, communicate with the public, market products, research consumer
trends, launch new products, create a corporate identity, etc.
When comparing business management with advertising, advertising is an essential
tool in business management because it makes the business itself known in the
market. As stated above, the purpose of advertising services is to ‘reinforce a client’s
position in the market’ and the purpose of business management services is to help a
business ‘acquire, develop and expand market share’. There is no clear-cut
difference between the two. A professional who offers advice on how to run a
business efficiently may reasonably include advertising strategies in their advice
because there is little doubt that advertising plays an essential role in business
management. Furthermore, business consultants may offer advertising (and
marketing) consultancy as part of their services and the relevant public may thus
believe that these two services have the same professional origin. Therefore, they
are similar to a low degree.
However the contested business administration; office functions and sale in shops,
door-to-door sales and sale via global computer networks of sporting articles and
accessories are services are dissimilar to the opponent’s goods and services.
The contested office functions cover services which are aimed at performing day-to-
day operations that are required by a business to achieve its commercial purpose.
The opponent’s business administration includes the efficient organization of people
and other resources, to direct activities toward common goals and objectives.
The contested sale in shops, door-to-door sales and sale via global computer
networks of sporting articles and accessories are services of selling goods, mostly to
Decision on Opposition No B 2 756 107 page: 6 of 14
general consumers in relatively small quantities for use or consumption. These
services allow consumers to satisfy various shopping needs at one stop and they can
take place in a fixed location, such as a department store, supermarket, boutique or
kiosk, or in the form of non-shop retailing, such as through the internet or by
catalogue, door-to-door sales or mail order. Although these activities can encompass
some actions involving the demonstration and presentation of goods, or providing
information about the goods to be sold, such ancillary tasks, for instance indicating
the characteristics of the product to the potential purchaser, are not considered as a
service per se but instead as an activity carried out by the trader for the purpose of
encouraging the conclusion of such a transaction (07/07/2005, C-418/02, Praktiker,
EU:C:2005:425, § 34).
On the other hand, the opponent’s services in Class 35, including services relating to
a business promotion activity in all its form; presentation of goods on all means of
communication for retail sale, consist of providing other companies with assistance
and support in the sale of their goods and services by promoting their launch and/or
sale, or of reinforcing the client’s position in the market and acquiring competitive
advantage through publicity and through the provision of information; therefore, they
fall within the broader category of advertising, marketing and promotional services.
Hence, the purpose, nature and methods of use of the contested business
administration; office functions and sale in shops, door-to-door sales and sale via
global computer networks of sporting articles and accessories and the opponent’s
services in Class 35 are different. They target different publics, do not have the same
providers and are typically commercialised through different distribution channels.
These (contested) services are also dissimilar to the remaining opponent’s goods
and services as they have no points in common. All these goods and services have
different nature, purpose and are rendered by different service providers. Although
the relevant public may coincide in some cases, this would not be sufficient to find
any degree of similarity on its own.
Contested services in Class 41
Entertainment; cultural activities are identically contained in both lists of services
(including synonyms).
The contested sporting activities overlap with the opponent’s organisation of
competitions. Therefore, they are identical.
The contested education; providing of training are similar to a low degree to the
opponent’s services of publications of all kinds (except for publicity purposes) and in
all forms, including electronic and digital publications as they can coincide in
distribution channels. Furthermore they are complementary.
Contested services in Class 42
The contested scientific and technological services and research and design relating
thereto are various scientific and technology-related activities which are concerned
with research and experimental development and contribute to the generation,
dissemination and application of scientific and technical knowledge. These services
include mainly services in relation to the theoretical and practical aspects of complex
fields of activities; such services are provided by members of professions such as
physicists, engineers, computer programmers etc.
Decision on Opposition No B 2 756 107 page: 7 of 14
Considering the above, these services have the same nature as the opponent’s
services of providing search engines for the internet. Furthermore, they can coincide
in producer and end user. Therefore, they are considered similar.
The above opponent’s services are also similar with the contested design and
development of computer hardware and software. All these services can coincide in
producer, end user and distribution channels.
However, the contested industry analysis and research services include services of
engineers and scientists who undertake evaluations, estimates, research and reports
in the scientific and technological fields e.g. water analysis and chemical analysis.
These services and the opponent’s goods and services have a different nature and
purpose, as well as different distribution channels and sales outlets. Furthermore,
they are not complementary nor in competition. They are, therefore, dissimilar.
b) Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be
reasonably well informed and reasonably observant and circumspect. It should also
be borne in mind that the average consumer’s degree of attention is likely to vary
according to the category of goods or services in question.
In the present case, the goods and services found to be identical or similar, to various
degrees, are directed at the public at large as well as at business customers with
specific professional knowledge or expertise.
The degree of attention may vary from average to high, depending on the specialised
nature of the goods and services, the frequency of purchase or terms and conditions
of the purchased goods and services and/or their price.
c) The signs
BE
Earlier trade mark Contested sign
The relevant territory is European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in
question must be based on the overall impression given by the marks, bearing in
mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95,
Sabèl, EU:C:1997:528, § 23).
The unitary character of the European Union trade mark means that an earlier
European Union trade mark can be relied on in opposition proceedings against any
application for registration of a European Union trade mark that would adversely
Decision on Opposition No B 2 756 107 page: 8 of 14
affect the protection of the first mark, even if only in relation to the perception of
consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam,
EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the
relevant public of the European Union is sufficient to reject the contested application.
The common verbal element ‘be’ is meaningful in certain territories, for example in
those countries where English language is spoken and understood. Consequently,
the Opposition Division finds it appropriate to focus the comparison of the signs on
the English-speaking part of the public such as the United Kingdom and Ireland.
The earlier mark is a word mark. In the case of word marks, it is the words as such
that are protected and not their written form. Therefore, it is irrelevant whether they
are presented in upper or lower case letters, or in a combination thereof.
The contested mark is a figurative mark containing the verbal element ‘be’ in a
standard lower case green typeface followed by a blue colon, ‘:’, both elements
placed within a black rectangular background. The lower part of the word ‘be’ seems
to be enfolded by the black background, yet the verbal element ‘be’ is still clearly
legible.
The element ‘be’ is an English verb with several meanings and it will be understood
as such by the relevant public. None of the meanings are descriptive, allusive or
otherwise weak for the relevant goods and services; therefore it is distinctive in both
signs.
The colon in the contested sign will be associated with a punctuation mark
performing the function of preceding a description or explanation and will be
attributed little, if any, trade mark significance. As regards the black rectangular
background in the contested sign, it is of a purely decorative nature and as such non-
distinctive.
The contested sign has no element that could be considered clearly more dominant
(visually eye-catching) than other elements.
Visually, the signs coincide in the verbal element ‘be’. They differ in the colon,
present only in the contested mark as well as in the colours and the stylisation of the
contested sign.
However, when signs consist of both verbal and figurative components, in principle,
the verbal component of the sign usually has a stronger impact on the consumer than
the figurative component. This is because the public does not tend to analyse signs
and will more easily refer to the signs in question by their verbal element than by
describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace,
EU:T:2005:289, § 37).
Considering that the earlier mark is entirely included in the contested sign while the
additional elements there will have a minimal impact in its differentiating, the signs
are visually highly similar.
Aurally, the pronunciation of the signs coincides in in the sound of the letters ‘be’,
present identically in both signs. The colon being a punctuation mark will not be
pronounced and the graphic presentation is irrelevant for the phonetic assessment.
Therefore, the signs are aurally identical.
Decision on Opposition No B 2 756 107 page: 9 of 14
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. As already mentioned above, the colon in the
contested sign has a very little trade mark significance. Therefore its meaning does
not affect the recognition and comprehension of the word ‘be’ in the two signs. In any
case, the colon on its own does not change the meaning of any word.
Since both signs will be convey the same meaning, they are conceptually identical.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account
in the global assessment of likelihood of confusion.
According to the opponent, the earlier mark has been extensively used and enjoys an
enhanced scope of protection. However, for reasons of procedural economy, the
evidence filed by the opponent to prove this claim does not have to be assessed in
the present case (see below in ‘Global assessment’).
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its
distinctiveness per se. In the present case, the earlier trade mark as a whole has no
meaning for any of the goods and services in question from the perspective of the
public in the relevant territory. Therefore, the distinctiveness of the earlier mark must
be seen as normal.
e) Global assessment, other arguments and conclusion
The likelihood of confusion must be appreciated globally, taking into account all the
factors relevant to the circumstances of the case; this appreciation depends on
numerous elements and, in particular, on the degree of recognition of the mark on the
market, the association that the public might make between the two marks and the
degree of similarity between the signs and the goods and services (11/11/1997,
C-251/95, Sabèl, EU:C:1997:528, § 22).
Furthermore, the global assessment of a likelihood of confusion implies some
interdependence between the relevant factors, and, in particular, similarity between
the trade marks and between the goods or services. Accordingly, a lower degree of
similarity between the services may be offset by a greater degree of similarity
between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, Lloyd
Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528,
§ 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
In addition, the likelihood of confusion includes a likelihood of association, in the
sense that the public may, if not confuse the two signs directly, believe that they
come from the same undertaking or from economically related ones (11/11/1997,
C-251/95, Sabèl, EU:C:1997:528, § 16).
In the present case, the goods and services at issue are partly identical, partly similar
to various degrees and partly dissimilar and the degree of attention varies from
average to high.
Decision on Opposition No B 2 756 107 page: 10 of 14
The marks are similar to the extent that they coincide in the verbal element ‘BE’
which constitutes the earlier mark and is fully reproduced and clearly perceptible in
the contested sign. As stated above, the additional elements in the contested sign
have a minimal impact in its differentiating.
The Opposition Division notes, that it is a common practice for manufacturers to
make variations of their trade marks, for example by altering the typeface or colours,
or adding verbal or figurative elements to them, in order to denote new product lines,
or to endow their trade mark with a new, modernized image. Moreover, consumers
are well accustomed to word marks being stylised and embellished with logotypes
and other devices.
Considering all the foregoing, the Opposition Division finds that the relevant public,
even with a higher degree of attention, may be led to believe that the signs relate to
economically linked undertakings or that the signs concern the same brand and are
configured slightly differently to denote a different range of goods or services.
In its observations, the applicant argues that the earlier trade mark has a low
distinctive character given that many trade marks include the verbal element ‘BE’. In
support of its argument the applicant refers to several trade mark registrations in the
EUIPO Registry.
However, the Opposition Division notes that the existence of several trade mark
registrations is not per se particularly conclusive, as it does not necessarily reflect the
situation in the market. In other words, on the basis of register data only, it cannot be
assumed that all such trade marks have been effectively used. It follows that the
evidence filed does not demonstrate that consumers have been exposed to
widespread use of, and have become accustomed to, trade marks that include the
verbal element ‘BE’. Under these circumstances, the applicant’s claims must be set
aside.
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the English-speaking part of the public and therefore the
opposition is partly well founded on the basis of the opponent’s European Union
trade mark registration. As stated above in section c) of this decision, a likelihood of
confusion for only part of the relevant public of the European Union is sufficient to
reject the contested application.
It follows from the above that the contested trade mark must be rejected for the
goods and services found to be identical or similar (to various degrees) to those of
the earlier trade mark.
The rest of the contested services are dissimilar. As similarity of goods and services
is a necessary condition for the application of Article 8(1) EUTMR, the opposition
based on this Article and directed at these services cannot be successful.
Since the opposition is partially successful on the basis of the inherent
distinctiveness of the earlier mark, there is no need to assess the enhanced degree
of distinctiveness of the opposing mark due to its extensive use/reputation as claimed
by the opponent and in relation to identical and similar, to various degrees, goods
and services. The result would be the same even if the earlier mark enjoyed an
enhanced degree of distinctiveness.
Decision on Opposition No B 2 756 107 page: 11 of 14
Likewise, there is no need to assess the claimed enhanced degree of distinctiveness
of the opposing mark in relation to dissimilar services, as the similarity of goods and
services is sine qua non for there to exist likelihood of confusion. The result would be
the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
Hence, the examination continues in relation to the remaining grounds of the
opposition, namely Article 8(5) EUTMR.
REPUTATION — ARTICLE 8(5) EUTMR
According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered
earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade
mark will not be registered where it is identical with, or similar to, an earlier trade
mark, irrespective of whether the goods or services for which it is applied are
identical with, similar to or not similar to those for which the earlier trade mark is
registered, where, in the case of an earlier European Union trade mark, the trade
mark has a reputation in the Union or, in the case of an earlier national trade mark,
the trade mark has a reputation in the Member State concerned and where the use
without due cause of the contested trade mark would take unfair advantage of, or be
detrimental to, the distinctive character or the repute of the earlier trade mark.
Therefore, the grounds 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.
In the present case, the applicant did not claim to have due cause for using the
contested mark. Therefore, in the absence of any indications to the contrary, it must
be assumed that no due cause exists
a) Reputation of the earlier trade mark
According to the opponent, the earlier trade mark has a reputation in France.
Reputation implies a knowledge threshold which is reached only when the earlier
mark is known by a significant part of the relevant public for the goods or services it
Decision on Opposition No B 2 756 107 page: 12 of 14
covers. The relevant public is, depending on the goods or services marketed, either
the public at large or a more specialised public.
In the present case the contested trade mark was filed on 19/04/2016. Therefore, the
opponent was required to prove that the trade mark on which the opposition is based
had acquired a reputation in France prior to that date. The evidence must also show
that the reputation was acquired for the goods and services for which the opponent
has claimed reputation, namely
Class 16: Magazines, journals, publications; plastic materials for packaging,
namely bags.
Class 35: Advertising, for the promotion of miscellaneous goods and services, in
particular in the fields of fashion (fashion articles and accessories, styling, shows),
beauty and hygiene (cosmetics, soaps, perfumery preparations, sanitary
preparations, beauty care, body care and massage, relaxation services and
thalassotherapy), entertainment and culture (arranging shows and events in the
fields of cinema, theatre, music, forums and meetings, music compilations and mood
compilations, digital images and sounds, games, playthings); on-line advertising on a
computer network; subscriptions to electronic newspapers, magazines and
publications available and searchable via and on the Internet; promotion (for others);
services relating to a business promotion activity in all its forms, in particular
recommendation, sponsorship, patronage, commercial sponsorship operations and
promotional information campaigns relating to miscellaneous goods and services, in
particular in the field of fashion (fashion articles and accessories, styling, shows),
beauty and hygiene (cosmetics, soaps, perfumery preparations, sanitary
preparations, beauty care, body care and massage, relaxation services and
thalassotherapy), entertainment and culture (arranging shows and events in the
fields of cinema, theatre, music, forums and meetings, music compilations and mood
compilations, digital images and sounds, games, playthings), sport; presentation of
goods on all means of communication for retail sale.
Class 38: Press agencies; transmission of messages; broadcasting of programs;
providing Internet chat rooms; operating online discussion forums and chat rooms.
Class 41: Entertainment; cultural events; public recreation (entertainment);
publishing of texts (except publicity texts), illustrations, books, journals, newspapers,
periodicals, magazines and publications of all kinds (except for publicity purposes)
and in all forms, including electronic and digital publications; exploitation of online
non downloadable electronic publications; organisation of competitions; organization
of exhibitions for cultural or educational purposes.
Class 42: Providing search engines.
In order to determine the mark’s level of reputation, all the relevant facts of the case
must be taken into consideration, including, in particular, the market share held by
the trade mark, the intensity, geographical extent and duration of its use, and the size
of the investment made by the undertaking in promoting it.
On 28/02/2017 the opponent submitted the following evidence:
A screenshot of the website www.be.com. The screenshot is showing the
word ‘Be’ next to a cartoonlike picture of a teddy bear with a woman’s legs in
tights. It also includes the following text ‘Tuesday 28 February, HAPPY
TEDDY BEAR DAY, Biiim beauty’.
Decision on Opposition No B 2 756 107 page: 13 of 14
Three undated screenshots of the website www.be.com, showing some titles
of articles (9 all together) with relevant photos above them. The titles are in
English, e.g. ‘5 running shoes at the top!’, ‘The IT-bags of stars that we want
to find in empty dressing room.’ Below three of the titles appear a name and a
date, which seems to be the date of when the article was published. All three
of them are from September 2016.
An undated screenshot of a Facebook site of Be Magazine. The text on the
right side is the following ‘Fashion, beauty, people, lifestyle…All you need to
know is on Be!’ There is no further indication about the content of the side,
e.g. it does not include any comments or any topics. The opponent
highlighted the number of likes, which is 293 471.
An undated screenshot of an Instagram site of Be Magazine, depicting five
photos with different themes related to lifestyle, food, fashion.
An undated screenshot of twitter website showing the title ‘BE RELOADED’,
including also the word ‘Be’ within a figurative element in a label. On the left
side of the page the following text appears ‘Fashion, beauty, people,
lifestyle…All you need to know is on Be!’.
An undated screenshot of YouTube website showing information about the
website Be.com. The text there informs that ‘Be.com offers daily news,
pictures, interviews and videos on fashion, beauty, culture, cinema, people
and sex’. It also indicates that the content was viewed 9694 times three
months ago.
An undated screenshot of https://fr.pinterest.com showing four full (different)
covers of the magazine ’Be’ and four partial pictures of covers of the
magazine. The text on these covers is in English and French, respectively.
Three of them have depicted 1€ within a round label, which seems to be the
price of the magazine. None of the covers includes a clearly visible date.
The Opposition Division finds that the evidence submitted by the opponent does not
demonstrate that the earlier trade mark acquired a reputation.
The evidence submitted is not supported by any statements from third parties and
nor are there any documents such as opinion polls or market surveys. There are no
invoices or other commercial documents either. Most of the information derives from
the opponent itself.
The few screenshots from the above mentioned websites show some use of the
earlier mark ‘Be’, respectively its slight variations, however, as the opponent did not
provide any further evidence and explanation regarding their content, these
documents do not provide clear and conclusive evidence in relation to the relevant
factors, such as the time and frequency of use, geographical scope, link to the
relevant goods and services. The mere mentioning of the sign ‘Be’ on these websites
does not prove its recognition by the relevant public as a trade mark in connection to
the relevant goods and services.
Whilst the numbers included in these screenshots, e.g. the number of likes, the
number of tweets, could indicate some use, they are not sufficient to show clearly the
recognition of the mark amongst the public in the relevant territory, namely France as
it is not even clear where these website where accessed since, a website is
accessible throughout the world, so anyone anywhere can access it.
Hence, despite showing some use of the trade marks ‘Be’, the evidence provides no
or little information on the extent of such use in relation to the claimed goods and
Decision on Opposition No B 2 756 107 page: 14 of 14
services in the relevant time and territory. Furthermore, the submitted evidence does
not contain sufficient information about any other relevant factors such as the market
shares held by the mark; how intensive, geographically widespread and longstanding
use of the mark has been; the amount invested by the undertaking in promoting the
mark. The evidence does not provide any objective and clear indication of the degree
of recognition of the earlier trade mark by the relevant public.
As a result, the evidence does not show that the earlier trade mark in question is
known by a significant part of the relevant public. Under these circumstances, the
Opposition Division concludes that the opponent failed to prove that its trade mark
have a reputation.
As seen above, it is a requirement for the opposition to be successful under
Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been
established that the earlier trade mark has a reputation, one of the necessary
conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be
rejected.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
EUTMR, where each party succeeds on some heads and fails on others, or if
reasons of equity so dictate, the Opposition Division will decide a different
apportionment of costs.
Since the opposition is successful for only some of the contested goods and
services, both parties have succeeded on some heads and failed on others.
Consequently, each party has to bear its own costs.
The Opposition Division
Beatrix STELTER Renata COTTRELL Julia SCHRADER
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.