OPPOSITION No B 2 572 488

The Coca-Cola Company, One Coca-Cola Plaza, Atlanta, Georgia 30313, United States of America, (opponent), represented by Hoyng Rokh Monegier Spain LLP, Calle Ruiz de Alarcón, 7-2º Dcha, 28014 Madrid, Spain (professional representative)

a g a i n s t

Lega Pallavolo Serie A Femminile, Via Copernico, 28, 20125, Milan, Italy, (applicant), represented by Bugnion S.P.A., Viale Lancetti, 17, 20158, Milan, Italy (professional representative).

On 10/07/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 572 488 is partially upheld, namely for the following contested services:

Class 41:         Information and advisory services relating to entertainment, sport, recreation, television and news; Electronic game services and competitions provided over a global computer or telecommunication network or other interactive communication network including the internet; Publication of electronic books and journals on-line.

        

2. European Union trade mark application No 14 051 072 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 14 051 072. The opposition is based on its earlier Croatian trade mark registration No Z20102040 and European Union trade mark registration No 8 711 947, both for the word trade mark ‘FANTA’. The opponent invoked Articles 8(1)(b) for both of the earlier registrations and Article 8(5) EUTMR when relying upon its European Union trade mark registration No 8 711 947.

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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Croatian trade mark registration No Z20102040.

1. The goods and services

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

Class 28:        Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

Class 41:        Education; providing of training; entertainment; sporting and cultural activities. 

The contested services are the following:

Class 38:        Providing telecommunications over a global computer or telecommunication network or other interactive communication network including the internet; Electronic data interchange services; Telecommunication of information (including webpages), computer programmes and other data; Data communication services; Communications by computer terminal; Transmission and processing of data from remote locations to computers; Providing access to on-line information services; Dissemination of information by telecommunications over a global computer or telecommunication network or other interactive communication network including the internet; News and sports agency services; Providing access to interactive database information and to information online from a computer database or provided from facilities on a global computer or telecommunication network or other interactive communication network including the internet.

Class 41:         Information and advisory services relating to entertainment, sport, recreation, television and news; Electronic game services and competitions provided over a global computer or telecommunication network or other interactive communication network including the internet; Publication of electronic books and journals on-line.

Class 42:        Setting up and operating a database; Computer programming; Editor's services; Databases, On-line services, Via internet, Information services and Consultancy relating to sport, in particular volleyball.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested services in Class 38

All of the contested Class 38 services are various telecommunications and the transmission of information services.  Whilst it also includes more specific terms such as news and sports agency services, these are also considered to be services aimed at conveying messages and information.  Whilst the earlier mark covers sporting and cultural activities and therefore there may be an overlap in end users (those interested in sporting and cultural activities) they differ in nature.  Further, they have different producers and distribution channels.  They are not in competition with each other or complementary to each other. Therefore, the dissimilarities between the respective services outweigh that the end users may be the same. They are dissimilar.

The position is even starker when comparing the contested services with the earlier Class 28 goods, not least because services are intangible whereas goods are tangible. Consumers would never realistically believe that the goods would come from the same economical undertaking. They are dissimilar.

Contested services in Class 41

The contested information and advisory services relating to entertainment, sport, recreation, television and news are included in the broad categories entertainment; sporting and cultural activities. Therefore, they are identical.

The contested electronic game services and competitions provided over a global computer or telecommunication network or other interactive communication network including the internet are included in the broader category entertainment services. Therefore, they are identical.

The contested publication of electronic books and journals on-line are considered to be similar to a low degree to the earlier providing of training since they coincide in distribution channels and are considered to be complementary.

Contested services in Class 42

The term ‘in particular’, used in the applicant’s list of services indicates that the specific 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).

The contested setting up and operating a database; databases, on-line services, via internet, information services and consultancy relating to sport, in particular volleyball are technical services which would be offered in order to start and maintain a database, and in respect of the latter services they would have an emphasis on volleyball. There is no similarity between these services and the earlier relied upon goods. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Further, the end users of the earlier relied upon Class 28 goods will differ to those seeking various database services. They would be provided by different producers via alternative distribution channels. They are clearly dissimilar.

With regard to the contested services, they are also dissimilar to the earlier relied upon services. The earlier training services are aimed at training and developing one’s skills and knowledge. Therefore, they differ in nature to setting up and operating a database. They would be sought by different end users and would not be offered by the same undertaking. The position is even starker when comparing the contested services with the earlier entertainment, sporting and cultural activities.  These are also dissimilar.

Whilst the contested databases, on-line services, via internet, information services and consultancy relating to sport, in particular volleyball may be used in relation to sport, in particular volleyball, the services differ in nature. End users of database services are likely to be businesses looking to create and maintain a database of existing and new customers plus hold various information about them.  With regard to sporting activity providers they would organise various events such as volleyball matches but not likely to seek database service providers. If they were looking to create and maintain a database it is more likely that they would purchase an off the shelf IT package rather than a bespoke technical database. The fact that some sporting activities may require databases is not sufficient to find a similarity between the services under comparison. Therefore, they differ in nature. Further they are not in competition with one another nor complementary. Whilst some sporting activities may use databases to record information, they are not considered to be in the same economic fields. Taking all of the aforementioned into account, the differences between the respective services are considered to be sufficient so that overall they are dissimilar.

The contested computer programming services are not considered to be similar to any of the earlier relied upon goods or services. They are dissimilar.

The contested editor’s services per se are typically services which cover the editing of publications such as newspapers, magazines, etc. and are proper to Class 41. However, since they have been accepted in Class 42 they relate to the editable services provided in Class 42 such as computer software editing. These services are clearly aimed at different end users to the earlier relied upon education, training, entertainment, sporting and cultural activities. They would be provided by different producers via different trade channels. They are dissimilar to all of the earlier relied upon goods and services.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical or similar to a low degree are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specific nature of the services, frequency of purchase and their price.  

3. The signs

FANTA
Earlier trade mark	Contested sign

The relevant territory is Croatia.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark consists of the word ‘FANTA’ which has no meaning for the relevant public and is normally distinctive.

The contested sign consists of the words ‘FANTAVOLLEY’ and ‘Cup’. The word ‘FANTA’ is in a thicker font than ‘VOLLEY’, whereas ‘CUP’ is in smaller font and within a circle. The meaning and distinctive character of the word ‘FANTA’ has already been discussed above. With regard to the words ‘VOLLEY’ and ‘CUP’ they have no literal meaning in Croatian. However, since many of the relevant Croatian public will understand many English words, ‘VOLLEY’ will be recognised and understood as referring to the sport and ‘CUP’ being the prize. However, since the services in question are not the organisation of volley ball tournaments they are not descriptive and therefore the distinctive character thereof is considered to be normal. The circle in the contested mark has no trade mark relevance since it is a basic geometrical shape.    

The elements FANTA and VOLLEY in the contested sign are the dominant elements as they are the most eye-catching, the cup due to its size and position plays a secondary role.

Visually, the signs coincide in the word ‘FANTA’ which is fully encompassed by the contested sign. It is in a primary position with an independent role due to its stylisation and being the more distinctive element of the sign. They differ in the elements ‘VOLLEY’ and ‘CUP’ as well as in the colours, graphical representation and colours of the contested sign. Accordingly, the marks are considered to be visually similar to an average degree.  

Aurally, the pronunciation of the signs coincide in the first syllables /fan-ta/ present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the latter syllables /vo-ley/ and /k-up/ of the contested sign, which no have no counterparts in the earlier sign. Since ‘FANTA’ is the first word which would be verbalised (since consumers tend to read from left to right), and the remaining elements are considered to be of weak distinctive character, the marks are considered to be aurally similar to a high degree.  

Conceptually, neither of the signs has, as a whole, a meaning for the relevant Croatian public. The significance and weight of the terms ‘VOLLEY’ and ‘CUP’ have been already discussed above; they do not serve to establish any conceptual similarity because they are not capable of indicating the commercial origin. The attention of the relevant public will be attracted by the fanciful verbal elements FANTA. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

5. Global assessment, other arguments and conclusion

The Court has stated that 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 (judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trademarks and between the goods and services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, §

24).

It must be borne in mind that although the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect, account is taken of the fact that consumers only rarely have the chance to make a direct comparison between the different marks and must place trust in the imperfect picture of them that they have kept in their minds. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

As concluded above, the marks are similar aurally similar to a high degree and visually similar to an average degree.  A conceptual comparison was not possible.  

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.  This is known as ‘indirect confusion’.

In this instance it is concluded that there is a likelihood of confusion since both marks share the common and distinctive element ‘FANTA’ and once the relevant public are faced with the contested sign, they will believe that it is economically linked to the earlier mark.  This is even the case where the respective services are similar to only a low degree.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Croatian-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s Croatian trade mark registration.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar to those of the earlier trade mark.

The rest of the contested services (Classes 38 and 42) are dissimilar.  Since 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 as far as earlier Croatian mark No Z20102040. The examination of the opposition will continue as regards the remaining European Union trade mark registration No 8 711 947.  

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

As previously stated the opponent also relies upon its earlier European Union trade mark registration No 8 711 947, also for the mark ‘FANTA’. Since this earlier mark was registered on 04/05/2010, which is over 5 years prior to publication of the contested sign (05/06/2015), it is the subject of the proof of use provisions.

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), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority 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 its European Union trade mark registration No 8 711 947. The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 05/06/2015. 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 05/06/2010 to 04/06/2015 (‘the relevant period’).

Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely the following:

Class 9:        Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.

Class 28:        Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

Class 32:        Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

Class 38:        Telecommunications.

Class 41:        Education; Providing of training; Entertainment; Sporting and cultural activities.

According to Rule 22(3) EUTMIR, 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 and services in respect of which it is registered and on which the opposition is based.

On 31/05/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 05/08/2016 to submit evidence of use of the earlier trade mark. This deadline was subsequently extended until 05/10/2016. On 05/10/2016, within the time limit, the opponent submitted evidence not just to prove use of its registration but also to substantiate its reputation for the Article 8(5) EUTMR claim. The evidence is summarised as follows and highlights where the opponent believes it focusses on a certain category of goods and services:

Evidence of use in relation to Class 32

The opponent states that FANTA is a leader throughout the European Union in the orange soft drinks market with a market share in this sector of above 50% in Spain and 48% in Italy. It was launched over 70 years ago. Further, it states that FANTA has recently become UK’s biggest orange carbonated drink by volume.  To support these claims, it has filed the following evidence under Exhibit 2:

• An article from diarioinformacion.com dated March 2008 which states that FANTA, in 2007, had a 55.6% market share of citric based soft drinks in Spain.
• An article from marketingnews.com dated February 2008 where it is stated that in Spain FANTA has around a 50% market share in the orange and lemon soft drinks sector.
• An article from findarticles.com dated September 2008 which states that a report from Nielsen Arms data puts FANTA as the second most important brand within the Coca Cola group and represents 50.6% of the citric sparkling beverage market.
• An article from findarticles.com dated February 2009 where it is sates that FANTA is the world’s third best-selling soft drink, with sales in excess of 1 billion cases.
• A print out from talkingretails.com dated November 2007 where reference is made to the launch of a new variant of FANTA called FANTA STILL. The print out states that FANTA is one of the best known brands in the UK, representing 30% of the UK soft drinks category and enjoying 97% recognition rate (a further print out from cokecce.co.uk dated 20 February 2009 also states that there is a 97% recognition rate in the UK).
• A 2009 study from the Italian University Carlo Cattaneo luc.it where it is stated that the market share in Italy for the mark FANTA in the soft drinks sector is 45%.
• An article from buenastareas.com dated December 2010, entitled ‘Soft drinks tendencies’ which makes reference to Spain. The opponent highlights the following statement ‘The competition in the soft drinks market is very strong, as it is a market with many marks and some of them very well positioned. But as mentioned before FANTA is the leader in the soft drinks sector with a market share of 46% for lemon citrus and 54% for orange’.
• A print out from the website vitadelia.com and amalakiamigos.com dated October 2011 which states that ‘FANTA turns 50 in Spain’ and where it is stated that FANTA leads the sales for fruit-based soft drinks in Spain’.
• An extract from the BRANDZ TOP 100 (most valuable brands), where FANTA appears as the 8th most valuable trade mark in the soft drinks sector with a brand value of 4,879 million dollars in 2015.
• A print out form the website brandfootprintranking.com which states that FANTA is ranked as the 5th most chosen beverage in Europe in 2014.

The opponent also filed the following evidence under cover of exhibit 7 which can be taken into consideration for the proof of use but not reputation (as outlined later in this decision):

• Highlighted extracts from Coca-Cola Iberian Partners’ and Coca-Cola European Partners’ Annual reports from 2015, where FANTA is referred to as one of the top 5 brands of the opponent in the UK, France, Benelux and Sweden.
• Comprises of a large number of invoices dated within the relevant period issued to Spanish and Portuguese companies. The invoices refer to FANTA and are addressed to various companies across the aforementioned countries.

In support of the opponent’s claim that it has a significant reputation for soft drinks, it refers to the earlier Opposition Division decision (B 1 837 064 dated 21/11/ 2012). In particular, the opponent refers to the following statement:

‘It is clear from the evidence that the earlier trademark has been subject to longstanding and intensive use and that it is generally well-known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by independent and diverse sources.  The sales figures and market share shown in the evidence, as well as the various references in the press to its success, are all factors that show unequivocally the mark enjoys a high degree of recognition among the relevant public in relation to soft drinks’.

Evidence of use in relation to Class 41

The opponent specifically referred to the following evidence which it claims to prove use of its online entertainment services.

• Print outs from the Google play website featuring the videogames for Fanta Fruit Slam 2, Fanta Arcade and Fanta Fun Trap. Further print out from various websites, including coca-colacompany.com amazon.co.uk etc. all featuring games which have FANTA in its title. These include FANTA Fruit Slam, FANTA City, FANTA 100 WAYS TO PLAY.  

The opponent also specifically refers to the following evidence which it claims to demonstrate use for its mark in relation to the remaining Class 41 services. The evidence (filed under Exhibits 8.1 to 8.5) includes:

• A print out from FANTA’S Facebook official profiles in different countries.
• Further print outs referring to the games FANTA FUN TAP and FANTA ARCADE offered by the Coca-Cola Company in 2014 and 2011 respectively.
• An article published from the opponent’s website from 2013 where reference is made to Play Fanta.  The article states that ‘The Play Fanta graphic novel recently was named FWA Site of the Day and Mobile Site of the Day. FWA, which stands for Favourite Website Awards, is an industry-recognised Internet recognition program established in May 2000’.
• A print out from the website Fanta.com/playfanta dated 5 July 2013 which shows an extract of the digital graphic novel ‘Saving the Source’.
• An article dated 24 July 2013 headed ‘Fanta challenges teens to play this summer?’ where reference is made to the launch of the app ‘Are you game?’.

The opponent claims that the following evidence demonstrates use of the mark for the earlier relied upon Class 38 services, namely:

• Exhibit 3.16: Print outs from the websites cocacolacompany.com and amazon.co.uk which refers to FANTA FRUIT SLAM.
• Exhibit 8.4: A printout from the website Fanta.com/playfanta archived in web.archive.org dated 5 July 2013.  The extract shows an extract of the digital graphic novel ‘Saving the Source’.

Assessment of use of the earlier mark

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).

With regard to the time of use, some of the evidence refers to use made outside the relevant timeframe (05/06/2010 to 04/06/2015). Generally this type of evidence is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use as well during the relevant period of time. 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).

Some of the evidence is dated 2007, 2008 and 2009, which is prior to the relevant period. However, the evidence shows that at this point the opponent had significant sales and brand recognition. Given the size of the sales and the size of the brand in the relevant territory, it is clear that there would be a continuation of sales and brand recognition into the relevant period.

Notwithstanding the above, the opponent has also provided evidence within the relevant time period. For example, it has provided numerous invoices showing use of the mark dated within the relevant period.

Turning to the place of use, the invoices specifically relate to Spain and Portugal whereas the independent market share studies show that the mark is used throughout the European Union. Therefore, the evidence relates to the relevant territory.

With regard to the nature of use, the Opposition Division considers that the sign at issue was used as a trade mark pursuant to Articles 15 and 42(2) EUTMR. The mark is used as registered (i.e. the word FANTA) and not as a variant thereof. The use of the mark FANTA was predominantly used for soft drinks.

With reference to 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, its commercial volume, duration and frequency. The mark FANTA has been used for around 70 years and the evidence shows that during the relevant period it has established a significant commercial position in the soft drinks sector. This is evidenced by the independent market reports showing that FANTA has a brand value of 4,819 million dollars and in 2014 it was ranked as the 5th most chosen beverage in Europe. Further, the invoices show sales throughout Spain and Portugal during the relevant period.

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.

With regard to the remaining classes, the opponent states (it’s submissions of 5 October 2016 refer) that its earlier mark has been effectively used during the relevant period for classes 32, 38 and 41. It then goes on to highlight use for each of the aforementioned classes, as outlined above.  

It is clear that the mark has not been used for all of the goods and service for which it is registered. By the opponent’s own admission, it has not submitted any evidence in connection with the earlier relied upon Classes 9 and 28.  Having reviewed all of the evidence this is certainly the case. With regard to the Classes 38 and 41 it has not provided any turnover or advertising figures in connection with the services provided, nor has it filed invoices, catalogues or third party independent evidence which demonstrates commercial use. The evidence filed does show that the opponent does produce games which are available via the Google play website and various online references which are used to promote the Fanta brand. However, since these are not sold and are used solely for promotional purposes then this is not considered to be genuine use in the course of trade.  

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only 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 that part of the goods or services.

According to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288).

In the present case, the evidence clearly proves use only for Class 32 soft drinks. These goods can be considered to form an objective subcategory of non-alcoholic drinks.  Therefore, the Opposition Division consider that the evidence shows genuine use of the earlier trade mark only for soft drinks. 

6. Comparison of the goods and services

The goods which the opponent has demonstrated use and may therefore rely upon in this opposition are as follows:

Class 32:        Soft drinks.

The remaining contested services which have not been successfully opposed under Article 8(1)(b) EUTMR on the basis of the Croatian trade mark registration No Z20102040 are as follows:

Class 38:        Providing telecommunications over a global computer or telecommunication network or other interactive communication network including the internet; Electronic data interchange services; Telecommunication of information (including webpages), computer programmes and other data; Data communication services; Communications by computer terminal; Transmission and processing of data from remote locations to computers; Providing access to on-line information services; Dissemination of information by telecommunications over a global computer or telecommunication network or other interactive communication network including the internet; News and sports agency services; Providing access to interactive database information and to information online from a computer database or provided from facilities on a global computer or telecommunication network or other interactive communication network including the internet.

Class 42:        Setting up and operating a database; Computer programming; Editor's services; Databases, On-line services, Via internet, Information services and Consultancy relating to sport, in particular volleyball.

It is clear and obvious that there is no point of similarity between the opponent’s earlier soft drinks and the above mentioned services.  They are dissimilar.  Given that dissimilarity of the respective goods and services cannot be overcome even by a highly distinctive character of the earlier trade mark, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

In view of the above, the Article 8(1)(b) EUTMR based on the opponent’s earlier European Union trade mark registration No 8 711 947 fails and is accordingly dismissed.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met:

• The signs must be either identical or similar.
• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.
• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

Whilst the comparison of the signs already carried out was in relation to the Croatian public, the findings regarding the distinctiveness of the terms ‘VOLLEY’ and ‘CUP’ are also applicable to the majority of EU Member States. Therefore, the comparison aleady taken place under the grounds of Article 8(1)(b) EUTMR are equally valid (and references is made to those findings) for Article 8(5) EUTMR.

2. Reputation of the earlier trade mark

The opponent claims that its earlier European Union trade mark registration No 8 711 947 has a reputation for other non-alcoholic drinks; fruit drinks Class 32.

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

In the present case the contested trade mark was filed on 11/05/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely other non-alcoholic drinks; fruit drinks.

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.

The factual content of the evidence filed by the opponent has already been summarised above under ‘Evidence for the assessment of the reputation of the earlier mark’.  For the avoidance of doubt the evidence filed on 05/10/2016 cannot be taken into account when assessing whether the earlier relied upon mark has acquired a reputation. Whilst it was filed within the period to prove use of the earlier registration it was filed beyond the deadline set by the official correspondence of 10/09/2015. Therefore, the opponent’s submissions filed on 05/10/2016 along with exhibits 7.1 – 7.5 plus exhibits 8.1 – 8.5 will not be taken into account for the assessment of reputation of the earlier mark.

It is clear from the evidence (which was filed in time) that the earlier trade mark has been subject to long-standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources. For example, the BRANDZ TOP 100 (most valuable brands) states that FANTA is the 8th most valuable trade mark in the soft drinks sector with a brand value of 4,879 million dollars in 2015. Whilst the evidence demonstrating the market share is dated around 2010, a market share of 54% in Spain is large.

Therefore, the evidence unequivocally shows that the mark enjoys a high degree of recognition among the relevant public. This reputation is in the mark FANTA in the soft drinks sector. Given the brand value, sales figures and market share, which have been independently verified, the scale of reputation is high.

3. The ‘link’ between the signs

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

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

∙        the degree of similarity between the signs;

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

∙        the strength of the earlier mark’s reputation;

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

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

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

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

The goods for which reputation has been proven are soft drinks.  

The contested services found to be dissimilar to the opponent’s goods are as follows:

Class 38:        Providing telecommunications over a global computer or telecommunication network or other interactive communication network including the internet; Electronic data interchange services; Telecommunication of information (including webpages), computer programmes and other data; Data communication services; Communications by computer terminal; Transmission and processing of data from remote locations to computers; Providing access to on-line information services; Dissemination of information by telecommunications over a global computer or telecommunication network or other interactive communication network including the internet; News and sports agency services; Providing access to interactive database information and to information online from a computer database or provided from facilities on a global computer or telecommunication network or other interactive communication network including the internet.

Class 42:        Setting up and operating a database; Computer programming; Editor's services; Databases, On-line services, Via internet, Information services and Consultancy relating to sport, in particular volleyball.

According to the Court of Justice of the European Union,

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

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 48.)

The Court of Justice has also noted,

… that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 51 and 52.)

In the present case, there is no overlap between the relevant sections of the public for the trade marks in dispute. The opponent argues that the contested sign would take an unfair advantage of its earlier trade mark since the respective marks are similar and its association to the healthy entertainment targeting the youth. The Opposition Division considers that each trade mark targets a different type of public.  

While the contested services are aimed at the general public and businesses they are in the telecommunications, computer programming, database (setting up and operating) and online service sectors the earlier trade mark was found to have a reputation among the public who consume soft drinks. Whilst the relevant section of the public for the goods or services covered by the conflicting marks do generally overlap, those goods or services are so different that the later mark is unlikely to bring the earlier mark to the mind of the relevant public.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

As previously stated, the requirements for Article 8(5) EUTMR to succeed are cumulative. Therefore, having falling at the ‘link’ hurdle the opponent is unsuccessful with its Article 8(5) EUTMR claim. However, for the sake of completeness, even if it is found that there is a ‘link’ between the respective signs, the Opposition Division does not consider there to be any risk of injury.  Situations where there is a risk to injury include, inter alia, 1) it takes unfair advantage of the distinctive character or the repute of the earlier mark, 2) it is detrimental to the repute of the earlier mark and/or, 3) 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).

The opponent claims that use of the contested sign for online games and provision of online entertainment would result in the word FANTA ‘no longer be associated so strongly and exclusively with our client’. Further, ‘the indiscriminate use of FANTA…would cause an irreparable damage to the uniqueness of the brand image built up by our client for FANTA over time’. The opponent also states that the use of the contested sign would undoubtedly lead to free-riding and unjustifiably benefit from the considerable investment made by the opponent in promoting its mark. These are all generic arguments which are considered to be hypothetical possibilities which are no more than mere possibilities.  Therefore, there is no risk of injury and even if the link had been established (which it has not), the Article 8(5) EUTMR claim would be dismissed on this basis.

4. Conclusion

Therefore, taking into account and weighing up all the relevant factors of the case at hand, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Ioana MOISESCU

Mark KING

Carmen SÁNCHEZ PALOMARES

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.