googfit | Decision 2594698 – Google Inc. v. 7 Days Inc.

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OPPOSITION No B 2 594 698

Google Inc., 1600 Amphitheatre Parkway, Mountain View, California 94043, The United States of America (opponent), represented by Grünecker Patent- und Rechtsanwälte Partg mbB, Leopoldstr. 4, 80802 München, Germany (professional representative)

a g a i n s t

7 Days Inc., 3503 Jack Northrop Ave Suite # V2751, Hawthorne 90250, The United States of America (applicant), represented by Dr. Meyer-Dulheuer & Partners LLP, Franklinstr. 46-48, 60486 Frankfurt am Main, Germany (professional representative).

On 13/01/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 594 698 is partially upheld, namely for the following contested goods:

Class 9:         Computer memory devices; computers; computer peripheral devices; interfaces for computers; readers [data processing equipment]; pocket calculators; computer game programs; downloadable music files; pedometers; quantity indicators; apparatus to check franking; counterfeit [false] coin detectors; plotters; scales; measures; signal lanterns; navigational instruments; video telephones; hands free kits for phones; global positioning system [GPS] apparatus; acoustic couplers; cameras [photography]; measuring apparatus; audiovisual teaching apparatus; inductors [electricity]; cosmographic instruments; stereoscopes; cables, electric; wires, electric; telegraph wires; telephone wires; semi-conductors; printed circuits; coils, electric; rheostats; transformers [electricity]; converters, electric; switches, electric; connections for electric lines; video screens; remote control apparatus; optical fibers [fibres] [light conducting filaments]; electric apparatus for communication; electrolysers; extinguishers; acoustic [sound] alarms; chargers for electric batteries; batteries, electric; animated cartoons.

Class 10:         Medical apparatus and instruments; testing apparatus for medical purposes; thermometers for medical purposes; dental apparatus; physiotherapy apparatus; hearing aids for the deaf; hearing protectors.

Class 14:         Wristwatches; stopwatches.

2.        European Union trade mark application No 14 243 166 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 243 166. The opposition is based on, inter alia, European Union trade mark registrations No 1 104 306 and No 10 081 073. The opponent invoked Article 8(1)(b), 8(4) and 8(5) EUTMR.

PRELIMINARY REMARKS ON THE SUBSTANTIATION OF EARLIER INTERNATIONAL TRADE MARK REGISTRATION No 881 006

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered – Rule 19(2)(a)(ii) EUTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards international registration No 881 006 designating the European Union, on which, inter alia, the opposition is based.

On 29/10/2015 the opponent was given two months, commencing after the end of the cooling-off period, namely until 03/03/2016, to submit the abovementioned material. On 25/02/2016, this time limit was extended until 03/05/2016, as requested by the opponent.

The abovementioned time limit expired on 03/05/2016 and the opponent did not submit any evidence concerning the substantiation of the international trade mark registration mentioned above.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on international trade mark registration No 881 006.

The Opposition Division will proceed with the examination of the opposition in relation to the opponent’s European Union trade mark No 1 104 306.

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 European Union trade mark registration No 1 104 306.

  1. The goods and services

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

Class 9:         Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; 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; computer software; computers; computer hardware; electronic and electromechanical peripheral apparatus, all for use with computers; computer networks; computer programmes and programming languages; microprocessors; circuit boards; computer accessories; business machines; office accessories; semi-conductors; computers displays; computers monitors; video monitors; projectors; integrated circuits; storage and network controllers and devices; data recorded magnetically, electronically, or optically; instructional material relating to computers and to data, all recorded magnetically, optically or electronically; magnetic, optical and electronic data recording materials.

Class 35: Compiling, storing, analyzing and retrieving data and information; maintaining, indexing and electronically distributing information materials. Creating indexes of information, websites and other information sources.

Class 38:         Telecommunications and communications services; provision of access to electronic communication networks and the Internet and extranets; arranging commercial transactions over electronic communication networks; electronic transmission of mail and messages; internet service provider services; information relating to the aforesaid, including such services provided online from a computer network or via the Internet or extranets. Transferring and disseminating information and data via computer networks and the Internet. Providing electronic mail and workgroup communications services.

Class 42: Computers services: consulting, design, testing, research, analysis, timesharing, technical support and other technical and advisory services, all relating to computing and computer programming: web site design, creation and hosting services; website portal services; research, development, design and upgrading of computer software; database leasing; providing access to, leasing access time to, and providing search, retrieval, indexing, linking and data organization capabilities for the Internet, electronic communications networks and electronic databases; internet service provider services; providing access to proprietary collections of information; website search engine services; information, consultancy and advisory services, all relating to the aforesaid, including such services provided online from a computer network or via the Internet or extranets. Consultancy and advisory services, all relating to telecommunications and communications services, to the provision of access to electronic communication networks and the Internet and extranets, to arranging commercial transactions over electronic communication networks, to electronic transmission of mail and messages, to internet service provider services; including such services provided online from a computer network or via the Internet or extranets. Providing software interfaces available over a network in order to provide personalised access to a global computer information network for the transfer and dissemination of information in the fields of news, science, health, family, home, society, entertainment, sports, education, travel, business and financial information in the nature of text, electronic documents, databases, graphics and audiovisual information.

The contested goods are the following:

Class 9:         Computer memory devices; computers; computer peripheral devices; interfaces for computers; readers [data processing equipment]; pocket calculators; computer game programs; downloadable music files; pedometers; quantity indicators; apparatus to check franking; counterfeit [false] coin detectors; plotters; scales; measures; signal lanterns; navigational instruments; video telephones; hands free kits for phones; global positioning system [GPS] apparatus; acoustic couplers; cameras [photography]; measuring apparatus; audiovisual teaching apparatus; inductors [electricity]; cosmographic instruments; stereoscopes; cables, electric; wires, electric; telegraph wires; telephone wires; semi-conductors; printed circuits; coils, electric; rheostats; transformers [electricity]; converters, electric; switches, electric; connections for electric lines; video screens; remote control apparatus; optical fibers [fibres] [light conducting filaments]; electric apparatus for communication; electrolysers; extinguishers; acoustic [sound] alarms; chargers for electric batteries; batteries, electric; animated cartoons.

Class 10: Medical apparatus and instruments; testing apparatus for medical purposes; thermometers for medical purposes; dental apparatus; physiotherapy apparatus; hearing aids for the deaf; hearing protectors.

Class 14:         Works of art of precious metal; wristwatches; stopwatches.

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 goods in Class 9

The contested computers; semi-conductors; measuring apparatus are identically contained in both lists of goods and services.

The contested computer peripheral devices and the opponent’s electronic and electromechanical peripheral apparatus, all for use with computers are synonymous and, therefore, identical.

The contested printed circuits and the opponent’s circuit boards are synonymous for printed circuit boards (PCBs) and, therefore, identical.

The contested video screens and the opponent’s video monitors are synonymous and, therefore, identical.

The contested readers [data processing equipment] are included in the broad category of the opponent’s data processing equipment. Therefore, they are identical.

The contested computer game programs are included in the broad category of the opponent’s computer programmes. Therefore, they are identical.

The contested downloadable music files are electronic files containing music. The purpose of such electronic files is to allow purchasers to keep recordings of music to be able to listen to them when they choose. Therefore, these goods are included in the broad category of the opponent’s data recorded magnetically, electronically, or optically, and they are identical.

The contested computer memory devices include as a broader category or overlap with the opponent’s magnetic data carriers; recording discs and storage devices. 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 pocket calculators; pedometers; quantity indicators; apparatus to check franking; counterfeit [false] coin detectors; scales; measures are included in the broad categories of the opponent’s weighing, measuring, checking (supervision) apparatus and instruments; calculating machines. Therefore, they are identical.

The contested signal lanterns; navigational instruments; global positioning system [GPS] apparatus are included in or overlap with the broad category of the opponent’s signalling apparatus and instruments. Therefore, they are identical.

The contested cameras [photography] are included in the broad category of the opponent’s photographic, cinematographic, optical apparatus and instruments. Therefore, they are identical.

The contested audiovisual teaching apparatus are included in the broad category of the opponent’s teaching apparatus and instruments. Therefore, they are identical.

The contested extinguishers are included in the broad category of the opponent’s fire-extinguishing apparatus. Therefore, they are identical.

The contested stereoscopes; cosmographic instruments; optical fibers [fibres] [light conducting filaments] are included in the broad category of, or overlap with, the opponent’s optical apparatus and instruments. Therefore, they are identical.

The contested goods include, inter alia, inductors [electricity]; cables, electric; telegraph wires; telephone wires; wires, electric; coils, electric; rheostats; transformers [electricity]; converters, electric; switches, electric; connections for electric lines; chargers for electric batteries; batteries, electric;

The expression electric apparatus and instruments, in Class 9, covered by the earlier trade mark, cannot be interpreted as covering all apparatus powered by electricity. Indeed, there are apparatus powered by electricity in various classes. The term electric apparatus and instruments included in the list of goods in Class 9 covers apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity.

Since all the aforementioned contested goods serve for conducting, switching, transforming, accumulating, regulating or controlling electricity, they are included in the broad category of the opponent’s electric apparatus and instruments. Therefore, they are identical.

The contested goods are, inter alia, plotters; video telephones; acoustic couplers; acoustic [sound] alarms; the opponent’s earlier right covers apparatus for recording, transmission or reproduction of sound or images, which is used to communicate audio or video information over a distance using radio waves, optical signals, etc. or along a transmission line. The contested goods are included in the broad category of the opponent’s apparatus for recording, transmission or reproduction of sound or images. Therefore, the contested plotters; video telephones; acoustic couplers; acoustic [sound] alarms are considered identical to the opponent’s goods.

The contested electric apparatus for communication are included in the broad category of, or overlap with, the opponent’s computer networks. Therefore, they are identical.

The contested electrolysers are included in the broad category of the opponent’s scientific apparatus and instruments. Therefore, they are identical.

The contested interfaces for computers are included in the broad category of the opponent’s computer software. Therefore, they are identical.

The contested hands free kits for phone are created for and used with phones to enable hands-free communication. The contested remote control apparatus are devices that control, for example, audio visual equipment, such as a television, from a distance. The earlier mark includes apparatus for recording, transmission or reproduction of sound or images. It is clear that the same company that produces the earlier goods may also produce the hands free kits for phone or remote control apparatus to be used with them. Therefore, the goods may originate from the same producer, be distributed through the same channels and be complementary. They may also target the same consumers. The goods are therefore highly similar.

The contested animated cartoons are films for the cinema, television or computer screen that are made using sequential drawings. The opponent’s earlier right includes, inter alia, computer software. These goods can be complementary to each other and have the same users; moreover, they can be distributed through the same distribution channels. Therefore, these goods are considered similar to a low degree.

Contested goods in Class 10

The contested medical apparatus and instruments; testing apparatus for medical purposes; thermometers for medical purposes; dental apparatus; physiotherapy apparatus; hearing aids for the deaf; hearing protectors are medical apparatus, instruments and articles and are used to improve a patient’s medical condition by preventing or curing health problems. All these goods have different natures, purposes and methods of use from all the opponent’s goods in Class 9 and services in Classes 35, 38 and 42. These goods and services have different origins; they are not in competition with or complementary to each other. Furthermore, these goods and services have different consumers and are not produced or provided by the same kinds of undertakings. Therefore, they are dissimilar.

Contested goods in Class 14

The contested goods in Class 14 are instruments designed to measure time (wristwatches; stopwatches) and works of art of precious metal. They are different in nature, purpose and methods of use from all the opponent’s goods in Class 9. These goods do not have the same distribution channels and do not target the same consumers. They are not produced by the same kinds of undertakings. These goods are not complementary or in competition.

Similarly, as regards the opponent’s services in Classes 35, 38 and 42, services are intangible, whereas goods are tangible, and they serve different needs. As these services do not have the same natures, purposes and methods of use, they are entirely different from the contested goods in Class 14. Furthermore, they have no relationship to the contested goods, since they are not complementary or in competition. The opponent’s services are far removed from the contested goods, do not have the same producers/providers or distribution channels, and target entirely different consumers. Therefore, they are dissimilar.

  1. 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 in Class 9 are found to be identical or similar to various degrees and are mainly directed at the public at large, but may also target a specialised public. Indeed, these goods may be specialised goods directed at business customers with specific professional knowledge or expertise, for example in the field of electrical equipment and electrical engineering, acoustics, graphics, or software and computing, but the goods may also target general consumers. As regards all the goods, the degree of attention may vary from average to high, depending on the price and the type or level of technological sophistication of the goods (e.g. software, computers, cameras [photography] or plotters).

  1. The signs

GOOGLE

GOOGFIT

Earlier trade mark

Contested sign

The relevant territory is the 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).

Both the earlier trade mark and the contested sign are word marks.

Neither the earlier mark nor the contested sign has any elements that could be considered clearly more dominant (visually eye-catching) than other elements.

The earlier single-word mark has no element that could be considered clearly more distinctive than other elements. The contested sign includes the element ‘fit’ in its second part; this will be associated by part of the European Union public with the English word often used in the market that refers to good health and being healthy and in good shape.

The earlier mark, ‘GOOGLE’, is meaningful for part of the public of the European Union, since it can be associated with the name of the search engine itself or the act of searching for something or someone on the internet. Indeed, this word appears in English dictionaries:

verb, [with object], Search for information about (someone or something) on the internet using the search engine Google. […]        
Origin: 1990s: from Google, the proprietary name of the search engine. Pronunciation: google/ˈɡuːɡl/ 

(information extracted from Oxford Dictionary online on 21/12/2016 at https://en.oxforddictionaries.com/definition/google)

noun, trademark: 

1. a popular search engine on the internet, verb (without a cap): 2. to search for (something on the internet) using a search engine, 3. to check (the credentials of someone) by searching for websites containing his or her name

(information extracted from Collins Dictionary online on 21/12/2016 at https://www.collinsdictionary.com/dictionary/english/google)

Visually, the signs coincide in their initial elements, which consist of the four letters ‘GOOG’; however, they differ in their endings, ‘LE’ in the earlier mark and ‘FIT’ in the contested sign.

The first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

The length of the signs may influence the effect of the differences between them. The signs in question are of very similar lengths, since the earlier mark is a six-letter single-word mark, whereas the contested sign is a single-word mark consisting of seven letters.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs is the same in the sound of the four coinciding letters ‛GOOG’, present identically in both signs. The pronunciation differs in the sound of the letters ‛LE’ in the earlier mark and ‘FIT’ in the contested sign, so that only the two-/three-letter endings of the marks do not coincide.

Therefore, the signs are aurally similar to an average degree.

Conceptually, although the earlier mark, ‘GOOGLE’, will be perceived by part of the public in the relevant territory as referring to the name of the search engine itself or the act of searching for something or someone on the internet, it has no meaning for the other part of the public. The contested sign ‘GOOGFIT’ lacks any meaning in the relevant territory. However, a part of the public in the relevant territory may perceive the element ‘FIT’, included in the contested sign, as an English word referring to good health and being in good shape, so that part of the European Union public will perceive the contested sign as referring to something ‘fit’; see section c) of the present decision.

For part of the public in the relevant territory, neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the public.

For the other part of the public, the signs will not be associated with any similar meanings; therefore, they are not considered conceptually similar.

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

  1. 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/reputation in Italy, Germany, the United Kingdom, Spain and France in connection with all the goods and services for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

On 03/05/2016 the opponent submitted, in particular, the following evidence:

  • Attachment 2: an affidavit, dated 02/05/2016, signed by Gavin Charlston, the trade mark counsel of Google Inc.
  • Attachment 3: printouts (28 pages), dated 27/04/2016, from Wikipedia, the free online encyclopaedia (https://en.wikipedia.org/wiki/Google), with information regarding the history, development and the products and services of the opponent’s company, Google Inc., ‘an American multinational technology company specializing in internet-related services and products that include online advertising technologies, search, cloud computing, software, and hardware’ that are offered, inter alia, under the trade mark in question. The Wikipedia article mentions that ‘Alexa, a company that monitors commercial web traffic, lists Google.com as the most visited website in the world. Several other Google services also figure in the top 100 most visited websites, including YouTube and Blogger. Google has been the second most valuable brand in the world for 4 consecutive years, and has a valuation in 2016 at $133 billion’. The article describes the growth of the opponent’s company and states that Google Inc. began in January 1996 with the search engine product under a different name, which was subsequently changed to Google, originating from a misspelling of the word ‘googol’. Initially, the search engine was accessible at Stanford University’s website; the domain for ‘Google’ was subsequently registered on 15/09/1997 and the company was incorporated on 04/09/1998. Since then, the search engine’s services have been provided at the website Google.com. Moreover, the article states that the search engine name, ‘Google’, has found its way into everyday language, with the result that the verb ‘google’ has been added to the Merriam-Webster Collegiate Dictionary and the Oxford English Dictionary.

In addition, the article gives information about the significant number of visitors using the search engine’s services worldwide: ‘in May 2011, the number of monthly unique visitors to Google surpassed one billion for the first time, an 8.4 percent increase from May 2010 (931 million)’.

  • Attachment 4: a printout (6 pages), dated 17/02/2016, of the abovementioned Alexa Company online ranking of the top 500 sites on the web, ‘Alexa Top 500 Global Sites’, listing the top web sites ordered by their one-month Alexa traffic, which gives information about the position of Google.com (first place), ahead of websites such as Facebook.com (second place), Youtube.com (third place) and other websites; however, it is not clear to which period this refers. The period is most likely to be in 2016, since the screen shots of the Alexa webpage (remaining pages) show the monthly visitor metrics in March 2016 for Germany, Italy, Spain, France and the United Kingdom; therefore, this piece of evidence is outside the relevant period.
  • Attachment 5: printouts of the following rankings for 2014:
  • Interbrand.com ranking for 2014 ‘Best Global Brands’, showing that the ‘GOOGLE’ brand is top ranked, second position in the ranking, with the brand value USD 107 439 million;
  • ‘BRANDZ Top 100 Most Valuable Global Brands 2014’, showing that ‘GOOGLE’ was in first position in the ranking, with the brand value, USD 158 843 million, and the rank change.
  • Eurobrand ranking ‘Global Top 100 Brand Corporations 2014’, placing ‘GOOGLE’ in second position in the ranking, with the brand value, USD 67 471 million and the rank change, up from third place in 2013;
  • Forbes ranking ‘The World’s Most Valuable Brands 2014’, placing ‘GOOGLE’ in the third position in the ranking (the screenshot shows the date 15/01/2015);
  • an article in The Verge noting that ‘GOOGLE’ overtook ‘APPLE’ as the world’s most valuable brand in 2014.
  • Attachment 6: printouts of the following rankings for 2015:
  • Interbrand.com ranking for 2015 ‘Best Global Brands’, showing that the ‘GOOGLE’ brand is top ranked, second position in the ranking, with the brand value USD 120 314 million;
  • ‘BRANDZ Top 100 Most Valuable Global Brands 2015’, showing that ‘GOOGLE’ was in second position in the ranking, with the brand value USD 173 652 million, and the rank change.
  • Forbes ranking ‘The World’s Most Valuable Brands 2015’, placing ‘GOOGLE’ in the third position in the ranking;
  • Eurobrand ranking ‘Global Top 100 Brand Corporations 2015’, placing ‘GOOGLE’ in second position in the ranking, with the brand value, USD 73 632 million, and the rank position in 2013 .
  • Attachment 7: printouts of the ranking from statista.com, The Statistics Portal (three pages), showing the market share of the search engine in 2014-2015. In Germany, the share was 94.54% in 2015 and 91.2% in 2014, and, in the United Kingdom, the share varied between 89% and 90% in 2014 and between 87% and 90% in 2015.
  • Attachment 8: copies of previous decisions of the Office, 25/11/2013, B 1 994 683, concerning the trade marks ‘GOOGLE’ and ‘GOOGOL’, and 11/05/2011, B 1 681 686, concerning the trade marks ‘GOOGLE’ and https://euipo.europa.eu/copla/image/GGIVU4WGEGD2LJBLYJY6ACUKPY2GMNUH2DMDRRPDKLRWSW4T4DCXAGXRFUAFIC2KOFEVDZLEE5EMG; both held that the word trade mark ‘GOOGLE’ enjoys a reputation.
  • Attachment 9: copies of decisions of the German Patent and Trademark Office with translations into the language of the present proceedings, 13/08/2010, case No 302 009 042 044, concerning the trade marks ‘GOOGLE’ and ‘ELGOOG’, and 28/05/2010, case No 302 008 032 950, concerning the trade marks ‘GOOGLE’ and ‘CITYGOOGLE’; both confirmed the reputation of the trade mark ‘GOOGLE’.

First, the trade mark ‘GOOGLE’ is depicted as http://prodfnaefi:8071/FileNetImageFacade/viewimage?imageId=81274353&key=d34ca89e0a840803398a1cf1b0997e44 or referred to as ‘GOOGLE’ throughout the documents. Given the low degree of stylisation of the characters in the figurative depiction, the Opposition Division considers that the figurative depiction of the sign amounts to use of the earlier EUTM in a form differing in elements that do not alter the distinctive character of the mark in the form in which they were registered (see Article 15(1), second subparagraph, point (a) EUTMR).

On the basis of the abovementioned evidence, the Opposition Division concludes that the earlier trade mark has a reputation in Italy, Germany, the United Kingdom, Spain and France for some of the services claimed.

It is clear from the evidence that the earlier trade mark has been subject to long-standing and intensive use worldwide. The trade mark ‘GOOGLE’ is generally known, not only in the relevant European Union market, where it enjoys a consolidated position among the leading brands, as is confirmed by all the rankings submitted by the opponent and has been attested by diverse independent sources. The brand value figures, the extensive presence on the internet in connection with the services/goods provided, the marketing and investment expenditure and, last but not least, the dominant market share shown by the evidence and the various references in the independent sources (particularly the exhaustive information from the online encyclopaedia Wikipedia) to the great success of the trade mark in question, all unequivocally show that the mark enjoys a high degree of recognition among the relevant public.

The evidence, however, does not succeed in establishing that the trade mark has a reputation for the goods in Class 9 and all the services on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to the services indicated below, whereas there is no or little reference to the remaining goods and services.

Having examined the material listed above, the Opposition Division concludes that the earlier trade mark has acquired a high degree of distinctiveness through its use on the market for some of the services claimed, namely:

Class 35:         Compiling, storing, analyzing and retrieving data and information; maintaining, indexing and electronically distributing information materials; creating indexes of information, websites and other information sources.

Class 38:         Transferring and disseminating information and data via computer networks and the Internet.

Class 42:         Providing access to, leasing access time to, and providing search, retrieval, indexing, linking and data organization capabilities for the Internet, electronic communications networks and electronic databases; providing access to proprietary collections of information; website search engine services.

  1. Global assessment, other arguments and conclusion

The Court has set out the essential principle that 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.

Furthermore, according to settled case-law, average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them.

The degree of awareness of the relevant public is considered to vary from average to high; the goods target both the public at large and professionals.

Some of the contested goods are identical, some are similar to various degrees and some are dissimilar to the opponent’s goods and services.

The earlier mark ‘GOOGLE’, which has an enhanced degree of distinctiveness in relation to some services in Classes 35, 38 and 42, is visually and aurally similar to an average degree to the contested sign and the signs will not be associated with any similar meaning. The signs coincide visually and aurally in the four letters ‘GOOG’, which are the initial part of the signs and will therefore attract most of the consumer’s attention and are likely to be the first to be remembered. As a consequence, the difference in the endings of the signs, ‘LE’/‘FIT’, cannot overshadow all the similarities, particularly taking into account the fact that both signs have a simple structure of a single word of similar lengths (six/seven letters).

The signs do not have any concept in common. A part of the European Union public can recognise the English word ‘fit’, included in the ending of the contested sign, as referring to good health and being in good shape. As mentioned in section c) of this decision, for part of the public the earlier trade mark will have a meaning, as consumers will associate the word ‘GOOGLE’ with either the name of the search engine itself or the act of searching for something or someone on the internet.

The Opposition Division finds that, bearing in mind the principle of imperfect recollection and the abovementioned similarities between the signs, the European Union public is likely to confuse the marks in question and assume that the goods/services covered are from the same undertaking or economically linked undertakings. Therefore, as far as the goods found to be identical or similar to various degrees are concerned, there is a likelihood of confusion on the part of the public of the European Union and the contested trade mark must be rejected for these goods.

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 the remaining goods cannot be successful, namely for:

Class 10:         Medical apparatus and instruments; testing apparatus for medical purposes; thermometers for medical purposes; dental apparatus; physiotherapy apparatus; hearing aids for the deaf; hearing protectors.

Class 14:         Works of art of precious metal; Wristwatches; stopwatches.

The opponent has also based its opposition on the following earlier right, namely European Union trade mark No 10 081 073 registered for the goods/services in Classes 9, 35, 36 and 42:

http://prodfnaefi:8071/FileNetImageFacade/viewimage?imageId=81274353&key=d34ca89e0a840803398a1cf1b0997e44.

The abovementioned European Union trade mark registration No 10 081 073 for the figurative mark includes the stylisation of the word ‘GOOGLE’, and the word mark ‘GOOGLE’ has already been compared with the contested sign; therefore, the conclusion regarding the aural and conceptual aspects of the comparison made under Article 8(1)(b) EUTMR as regards the word trade mark ‘GOOGLE’ is valid for this figurative mark. The word element included in the figurative mark has a stylised font; therefore, it renders this earlier right slightly less similar from the visual perspective than the earlier mark compared previously. Therefore, even if this earlier sign is similar to the contested one, it is slightly less similar to the contested sign than the other earlier right; moreover, it covers the same or a narrower scope of goods (inter alia, mobile phones and computer software used in various fields in Class 9) and services (inter alia, computerized on-line retail store services in the field of software applications in Class 35, electronic commerce payment services in Class 36 and, for example, hosting computer software applications of others and other computer-related services in Class 42). As a result, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

The Opposition Division will continue its analysis for the dissimilar goods under Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR – European Union trade mark registrations No 1 104 306 and No 10 081 073

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 shall 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

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

  1. Reputation of the earlier trade marks

According to the opponent, the earlier rights European Union trade mark registrations No 1 104 306 and No 10 081 073 have a reputation in Italy, Germany, the United Kingdom, Spain and 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 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 published on 10/06/2015. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in Italy, Germany, the United Kingdom, Spain and France prior to that date.

The evidence submitted on 03/05/2016 by the opponent to prove the reputation and highly distinctive character of the earlier marks has already been examined above under the grounds of Article 8(1) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

Regarding EUTM No 10 081 073,, it should be specified that the evidence must show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:

Class 9:         Mobile phones; computer software used to create visualizations of multi-dimensional designs in the fields of architecture, engineering, interior design, landscaping, game development and graphic arts; computer software for accessing, browsing, sharing, and communicating over computer networks and secure private networks; computer software for use in connecting to and searching the contents of remote computers, computer networks, and secure private networks; computer software for running web applications; computer search engine software; computer storage devices, namely, blank flash drives; computer mice and electric adapters.

Class 35:        Computerized on-line retail store services in the field of software applications for use on computers, mobile phones, and other electronic devices.

Class 36:         Electronic commerce payment services.

Class 42:         Application service provided (ASP), namely, hosting computer software applications of others; computer services, namely, providing search engines to allow users to find blogs on a wide variety of topics; computer services, namely, providing a search engine to allow users to preview, order and download books, search full texts of books, find reviews and other information on books, search for magazine content, and find references books on other wide sites; provision of customized search engines for others; providing a web site that enables users to store, organize, track, monitor, and share health and medical information; providing technical information in the field of computer software development; providing a web site featuring software development tools, API’s (application program interface) and technical resources; hosting discussion groups and blogs for software developers.

On the basis of the abovementioned evidence and for the same reasons as those already explained, the Opposition Division concludes that earlier trade mark No 10 081 073 has a strong reputation in Italy, Germany, the United Kingdom, Spain and France for some of the services claimed.

The evidence, however, does not succeed in establishing that the trade mark has a reputation for the goods in Class 9 and all the services on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to the services indicated below, whereas there is no or little reference to the remaining goods and services.

Class 42: Application service provided (ASP), namely, hosting computer software applications of others; computer services, namely, providing search engines to allow users to find blogs on a wide variety of topics; computer services, namely, providing a search engine to allow users to preview, order and download books, search full texts of books, find reviews and other information on books, search for magazine content, and find references books on other wide sites; provision of customized search engines for others; providing a web site that enables users to store, organize, track, monitor, and share health and medical information; providing technical information in the field of computer software development; providing a web site featuring software development tools, API’s (application program interface) and technical resources; hosting discussion groups and blogs for software developers.

Therefore, trade marks No 1 104 306 ‘GOOGLE’ and No 10 081 073  are considered to have a strong reputation, as described above, for only some of the services claimed.

  1. The ‘link’ between the signs

As seen above, the earlier marks are reputed and the signs are similar to a certain extent; the signs ‘GOOGLE’ and ‘GOOGFIT’ are visually and aurally similar to an average degree and conceptually not similar, and the figurative mark  is visually slightly less similar to the contested sign. 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 Court has held in the judgment of 27/11/2008, C-252/07, Intel, EU:C:2008:655, that the part of the public relevant to each of the goods and services covered by the trade marks in dispute is a factor to be taken into account when considering whether or not the existence of a link can be justified. Therefore, before examining the opponent’s claim, the Opposition Division finds it useful to restate that the earlier marks have a reputation in relation to some services in Classes 35, 38 and 42, as listed above, and that the opposition is directed against the remaining goods:

Class 10:         Medical apparatus and instruments; testing apparatus for medical purposes; thermometers for medical purposes; dental apparatus; physiotherapy apparatus; hearing aids for the deaf; hearing protectors.

Class 14:         Works of art of precious metal; Wristwatches; stopwatches.

In the present case, as seen above, the signs are visually and aurally similar to the extent that they have the string of letters ‘GOOG’ in common. Although the signs have different endings, this does not affect their significant similarity. As already stated, consumers generally tend to focus on the first part of a sign when confronted with a trade mark. Moreover, for a part of the public, the earlier marks and the contested sign convey no meanings that could help the public to distinguish the contested sign from the earlier marks. However, another part of the public can recognise the English word ‘fit’, which is often used in the market and is included in the ending of the contested sign, since it refers to good health, being healthy and being in good shape. It is therefore likely that this part of the public will perceive the contested mark as a version of the earlier marks in the field of health care. It is a frequent practice nowadays for companies to make small variations of their trade marks (e.g. by adding or removing terms or elements) to name new lines of products or to create a modern version of the sign.

An association between the marks is more likely where there is a special connection between the goods and services covered by the conflicting signs. Such a connection exists between the contested medical apparatus and instruments; testing apparatus for medical purposes; thermometers for medical purposes; dental apparatus; physiotherapy apparatus; hearing aids for the deaf; hearing protectors in Class 10 and wristwatches; stopwatches in Class 14 and the opponent’s computer services. All these goods are technological products and may be connected to computers or the internet. Therefore, there is a clear link between these goods and services.

However, the same cannot be said of the contested works of art of precious metal and the reputed services. In no circumstances would the contested goods have the same distribution channels as the opponent’s services. The goods and services have different producers, natures, purposes and methods of use, and they are neither complementary nor in competition. The relevant part of the public may be the same, given that the services for which a reputation has been proven target the general public and the goods in dispute may also target the average consumer, who is reasonably observant and circumspect. However, even though the relevant part of the public for the goods or services for which the conflicting marks are registered is the same or overlaps to some extent, those goods or services are so dissimilar that the latter mark is unlikely to bring the earlier marks to the mind of the relevant public. The huge differences in usage between the contested goods and the services for which a reputation has been proven make it very unlikely that the public will make a link between the signs in dispute, which is essential for the application of Article 8(5) EUTMR. It is even less likely that, when intending to purchase a work of art of precious metal, the relevant public will link these goods to trade marks that are very well known for services in the IT sector.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that when encountering the contested mark the relevant consumers will be likely to associate it with the earlier marks, that is to say they will establish a mental ‘link’ between the signs at least with regards to the following goods:

Class 10:         Medical apparatus and instruments; testing apparatus for medical purposes; thermometers for medical purposes; dental apparatus; physiotherapy apparatus; hearing aids for the deaf; hearing protectors.

Class 14:         Wristwatches; stopwatches.

However, 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, for all the remaining goods in Class 14, that is works of art of precious metal. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected for these goods.

Regarding the contested goods in Classes 10 and 14 (Wristwatches; stopwatches), although a ‘link’ between the signs is a necessary condition for assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 96).

  1. Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

        it takes unfair advantage of the distinctive character or the repute of the earlier mark;

        it is detrimental to the repute of the earlier mark;

        it is detrimental to the distinctive character of the earlier mark.

Although, in opposition proceedings, detriment or unfair advantage may be only potential, 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, however, ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/0672012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

In the present case, the opponent claims that the applicant is trying to ride on the coat-tails of the earlier marks and benefit from its power of attraction in order to easily attract consumers without having to make any efforts of its own. According to the opponent, the applicant is saving itself the need to undertake its own advertising for the services offered and the costs thereof. Moreover, the applicant is creating the impression of being commercially linked to the opponent.

Finally, the opponent argues that the use of the contested sign would cause a dilution of the distinctiveness and the repute of the earlier marks. It argues that it is likely that the capacity of the earlier marks to arouse immediate association with the opponent will be diminished through the use of the contested mark. This will lead to a weakening of the identity of the earlier marks and its hold on the public mind.

In other words, the opponent claims that the use of the contested trade mark would take unfair advantage of, and would be detrimental to, the distinctive character and repute of the earlier marks.

Unfair advantage (free-riding)

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

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, insofar as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to the average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 36.)

The opponent bases its claim on the following arguments:

  • The signs are similar because they include the same first letters, ‘GOOG’.
  • The earlier marks enjoy a very strong reputation.
  • The applicant will derive advantage not from its own investment and marketing efforts but from the link with the earlier marks.
  • The applicant is trying to ride on the coat-tails of the earlier marks and benefit from their power of attraction in order to easily attract consumers without having to make any efforts of its own.
  • The applicant is saving itself the need to undertake its own advertising for the services offered and the costs thereof.
  • The applicant is creating the impression of being commercially linked to the opponent.

To determine whether or not the use of the contested sign takes unfair advantage of the distinctive character or the repute of the earlier trade marks, it is necessary to undertake a global assessment, taking into account all factors relevant to the circumstances of the case, which include the strength of the mark’s reputation and the degree of distinctive character of the mark, the degree of similarity between the marks and the nature and degree of proximity of the goods or services concerned.

The rationale behind the extended protection under Article 8(5) EUTMR is the consideration that the function and value of a trade mark are not confined to its being an indicator of origin. A trade mark can also convey messages other than an indication of the origin of the goods and services, such as a promise or reassurance of quality or a certain image of, for example, luxury, lifestyle, exclusivity, etc. (‘advertising function’) (18/06/2009, C-487/07, L’Oréal, EU:C:2009:378). Trade mark owners frequently invest large sums of money and make significant efforts to create a certain brand image associated with their trade mark. This image associated with a trade mark confers on it an – often significant – economic value, which is independent of that of the goods and services for which it is registered.

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

It is also clear from case-law that, the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark (see, to that effect, by analogy, 18/06/2009, C-487/07, L’Oréal, EU:C:2009:378, § 44; and 27/11/2008, C-252/07, Intel, EU:C:2008:655, §67-69).

In the present case, it is clear from the evidence that the opponent’s efforts have focused on and succeeded in creating widespread high awareness of the earlier marks.

Furthermore, as explained above, the Opposition Division is of the opinion that the relevant public’s awareness of the earlier marks is high and the contested sign is so evocative of the earlier marks that a connection will be immediately established by the public, irrespective of the differences between the relevant goods and services. Firstly, the identical initial part of a sign is the one that first catches the attention of the reader. Secondly, the element ‘fit’, in the second part of the contested mark, will be associated by part of the European Union public with the English word often used in the market referring to good health, being healthy and being in good shape. Bearing in mind that the relevant goods in Class 10 are medical and that, in Class 14, stopwatches are used in sport and nowadays wristwatches are used to monitor good health, this element, ‘fit’, is weak for this part of the public and for these goods. It is therefore likely that this part of the public will perceive the contested mark as a variation of the earlier marks in the field of health care.

The proprietor of the earlier marks is not required to demonstrate actual and present harm to its mark for the purposes of Article 8(5) EUTMR, but it must adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or of detriment. Such a conclusion may be established, in particular, on the basis of logical deductions made from an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case (16/12/2010, T-345/08 & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 82). When it is foreseeable that such injury will ensue from the use that the proprietor of the later mark may be led to make of its marks, the proprietor of the earlier marks cannot be required to wait for it actually to occur in order to be able to prohibit that use.

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

Therefore, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the earlier trade marks regarding the goods medical apparatus and instruments; testing apparatus for medical purposes; thermometers for medical purposes; dental apparatus; physiotherapy apparatus; hearing aids for the deaf; hearing protectors in Class 10 and wristwatches; stopwatches in Class 14.         

Other forms of injury

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

However, it is sufficient if only one of the types of injury exists, and there is no need to examine whether or not others also apply.

In the present case, the Opposition Division has already established that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier marks for the goods for which a ‘link’ has been established. It follows that there is no need to examine whether other forms of injury also apply.

As the opposition has to be rejected insofar as it is based on Article 8(1)(b) and 8(5) EUTMR for the remaining contested goods, namely works of art of precious metal in Class 14, the Opposition Division will now examine the opposition on the ground of Article 8(4) EUTMR.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

The opponent has also based its opposition on the following non-registered trade marks or other signs used in the course of trade for health related platform and software application:

  • In Germany and the United Kingdom:

  • working title ‘GOOGLE FIT’,
  • trade name ‘GOOGLE FIT’.

  • In the United Kingdom:
  • non-registered trade mark ‘GOOGLE FIT’.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

  • the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

  • pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

  • the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

Furthermore, according to Rule 19(2)(d) EUTMIR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide [the Office] not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C-263/09 P, Elio Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the Opposition Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.

As regards national law, the opponent must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. The opponent must provide a reference to the relevant legal provision (article number, and the number and title of the law) and the content (text) of the legal provision either as part of its submission or by highlighting it in a publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision). As the opponent is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the opponent must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation.

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

On 29/10/2015 the opponent was given two months, commencing after the end of the cooling-off period, namely until 03/03/2016, to submit the abovementioned material. On 25/02/2016, this time limit was extended until 03/05/2016, as requested by the opponent. The time limit expired on 03/05/2016.

The opponent submitted with its observations, inter alia, some evidence of use in the course of trade of the non-registered trade mark or other signs ‘GOOGLE FIT’ used in the course of trade in Germany and/or the United Kingdom and some explanation of the provisions of the applicable law in Germany and the United Kingdom regarding these other rights. However, neither the notice of opposition nor the opponent’s observations were accompanied by the legal texts of the applicable law with (as far as German law is concerned) its translation into the language of proceedings.

According to Rule 19(4) EUTMIR, the Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

Given that the abovementioned evidence cannot be taken into account, the opponent failed to provide the Office with the relevant information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the law in Germany and/or the United Kingdom.

Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

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 goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Richard BIANCHI

Eamonn KELLY

Sigrid DICKMANNS

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.

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