OPPOSITION No B 2 736 802

Oracle America, Inc., 500 Oracle Parkway, Redwood Shores, California 94065, United States of America (opponent), represented by LDS Łazewski Depo & Partners, ul. Okopowa 58/72, 01-042 Warsaw, Poland (professional representative)

a g a i n s t

Javeo Sp. z o.o., al. Ks. J. Poniatowskiego 1, 03901 Warszawa, Poland (applicant), represented by Jarzynka I Wspólnicy Kancelaria Prawno-Patentowa, ul. Słomińskiego 19/522, 00-195 Warsaw, Poland (professional representative).

On 25/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 736 802 is upheld for all the contested goods and services.

2.        European Union trade mark application No 14 806 418 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 806 418 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registrations No 124 446 and No 6 551 626 for the word mark ‘JAVA’. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

The opposition is based on more than one earlier trade mark and on more than one ground. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registrations No 124 446 and No 6 551 626 on the ground of Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

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

Therefore, the grounds 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

JAVA
Earlier trade marks	Contested sign

The relevant territory is the European Union.

Visually, the signs are similar to the extent that they coincide in the letters ‘JAV’. However, they differ in their final letters, namely ‘A’ in the earlier marks and ‘EO’ in the contested sign. They also differ in the stylisation and colour (red) of the letter ‘V’ in the contested sign. The contested sign is a figurative mark that is stylised, whereas the earlier marks are word marks.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛JAV’ present in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letters ‘A’ of the earlier marks and ‘EO’ of the contested sign.

Conceptually, while the public in the relevant territory will perceive the earlier signs as ‘an island of Indonesia, south of Borneo’ (information extracted from Collins Dictionary on 13/09/2017 at https://www.collinsdictionary.com/dictionary/english/java), the contested sign lacks any meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs are aurally and visually similar to an average degree, the examination of the opposition on the ground of Article 8(5) EUTMR will proceed.

2. Reputation of the earlier trade marks

According to the opponent, the earlier trade marks have a reputation ‘in the European Union, as well as in the majority of the EU territory, particularly in Poland, Germany, Spain and in the United Kingdom’.

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 17/11/2015. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the European Union, Poland, Germany, Spain and the United Kingdom prior to that date.

The evidence must also demonstrate that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:

EUTM trade mark registration No 124 446

Class 9:         Computers, computer hardware, computer peripherals, integrated circuits, computer software.

Class 16: Publications concerning computer technology; printed matter, operating and user instructions; manuals and other written accompanying material for computer and computer software; computer programs and manuals sold as a unit.

Class 35:         Arranging and conducting trade shows in the fields of computer and information technology; advertising; business management; business administration; office functions.

Class 38: Electronic transmission of data over a global communications network, including the Internet, television and satellite networks; on-line distribution of computer software over the Internet and similar computer networks; telecommunications.

EUTM trade mark registration No 6 551 626

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; computer hardware; computer peripherals; computer software; computer operating systems; hand-held computers; mainframe-class computers; computer workstations; video displays; keyboards; monitors; servers; disc drives; computer storage devices; integrated circuits; interface boards; modems; mouse pointing devices; mouse pads; peripherals; printers and printer peripherals; printed circuit boards containing electrical components and sockets; processors and memories; blank magnetic data carriers; audio cassette recorders; audio cassette players; compact disc players; compact disc recorders; semi-conductor elements; silicon slices; electronic notice boards; blank computer recording discs; calculators; computer chips; computer disk drives; computer discs; data processors; digital cameras; digital video recorders; electronic encryption units; facsimile machines; global positioning system transmitters and receivers; internet television hardware; microprocessors; microcomputers; minicomputers; motion picture cameras; optical scanners; oscilloscopes; pedometers; photocopying machines; personal digital assistants; photographic cameras; photographic projectors; slide projectors; radio pagers; radios; scanners; smart cards; smart card readers; telephones; telephone answering machines; television sets; television set top boxes; thermostats; video cameras; video cassette recorders; video monitors; video tape recorders; voice messaging systems; voting machines; web telephones; wireless data communications hardware; computer programs for testing compatibility of computer programs; computer programs for use in computer networking; computer programs for use in computer emulation; computer programs for use in electronic mail; computer programs for creating graphical interfaces; computer programs for use in database management; computer programs for document processing; computer programs for word processing; computer programs for preparing spreadsheets; computer programs for use in computer security; computer programs for use in the development of computer programs, programming languages, tool kits and compilers; computer programs for use in developing, compiling and executing other computer programs on computers, computer networks, and global communications networks; computer programs for use in navigating, browsing, transferring information, and distributing and viewing other computer programs on computers, computer networks and global communications networks; computer programs for recording, processing, receiving, reproducing, transmitting, modifying, compressing, decompressing, broadcasting, merging, and/or enhancing sound, video, images, graphics, and/or data; computer operating system programs; computer utility programs; computer programs for use with computer servers; computer programs for use in telephones; computer programs used in accessing databases; computer game programs; computer programs downloadable from global computer networks; and instructional manuals in electronic format sold therewith; downloadable electronic publications.

Class 16: Paper, cardboard and goods made from these materials (included in class 16); printed matter; books; photographs; stationery; posters; comic books; coloring books; activity books; notebooks; address books; book marks; non-electronic personal planners and organizers; calendars; gift wrap; gift tags; gift bags; gift boxes; correspondence note paper; post cards; paper greeting cards; stationery stickers; photo albums; scrapbooks; autograph books; stamp albums; art reproductions; lithographs; iron-on patches; cardboard figures; cardboard cut-outs; magazines; desk top organizers; desk stands and holders for pens, pencils, tape, paper clips, and notepads; binders; dispensers for adhesive tapes for stationery or household purposes; clip boards; stationery, notepad and pencil sets; notepads; organizers for stationery use; pencil cases; pencil sharpeners; letter openers; stationery portfolios; desk pads and stationery sets comprised of paper, envelopes, seals, stencils, cork boards, chalk boards, and memorandum boards; sheet music; artist’s materials, namely, stationery portfolios and sketchbooks; paper party goods, namely, paper party decorations, paper napkins, paper ribbons, paper party bags, and paper party hats; gift package decorations made of paper; telephone calling cards, not magnetically encoded; business cards; temporary stick-on tattoos; typewriters and office requisites (except furniture); instructional and teaching materials (except apparatus); publications concerning computer technology; operating and user instructions; manuals and other written accompanying material for computers and computer software; computer programs and manuals sold as a unit.

Class 35: Arranging and conducting trade shows; arranging and conducting trade shows in the fields of computer and information technology; advertising; business management; business administration; office functions.

Class 37: Repair; installation services; computer hardware services, namely installation, maintenance and repair of computer hardware, computer systems and computer networks.

Class 38: Leasing of access time to computer networks and computer databases.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; providing conferences and seminars in the field of computers, computer hardware, computer software, and information technology.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; computer services, namely, providing consultation services and advice in the fields of computers, computer hardware, computer software, computer peripherals, computer systems, computer networks, computer-related equipment, computer security, information technology, electronic commerce technology and global computer network technology; leasing services (long-time rental) in the fields of computers, computer hardware, computer software, computer peripherals, computer systems, computer networks, and computer-related equipment; design for others in the fields of computers, computer hardware, computer software, computer peripherals, computer systems, computer networks, computer-related equipment, computer security, information technology, electronic commerce technology and global computer network technology; installation, maintenance, and repair of computer software; data processing services; website design; website hosting; computer programming; providing online information and news in the field of computers, computer hardware, computer software, and technology; application service provider, namely, providing, hosting, managing, developing, and maintaining applications, software, websites, and databases in the fields of computers, computer hardware, computer software, computer peripherals, computer systems, computer networks, computer-related equipment, computer security, information technology, electronic commerce technology and global computer network technology, wireless communication, mobile information access, and remote data management.

Class 45: Security services; computer security services; consulting services in the field of maintaining the security and integrity of databases; identification verification services, namely, providing authentication of personal identification information; providing fraud detection services for electronic funds transfer, credit and debit card and electronic check transactions via a global computer network; providing user authentication services in e-commerce transactions; providing user authentication of electronic funds transfer, credit and debit card and electronic check transactions via a global computer network; security consultancy; security services, namely, providing security assessments of information systems; legal services.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 30/12/2016, the opponent submitted the following evidence:

1) Excerpt from the trade mark register of the Polish Patent Office for trade mark No R-116 592 and a translation of it, along with a printout from the online database of the Office.

2) Excerpt from the online official database of the UK Intellectual Property Office showing current case details for UK trade mark No UK 00 002 107 938.

3) Affidavit of Marilyn Tiki Dare, managing counsel of Oracle America, Inc., dated 22/12/2016.

4) Information about the opponent’s company from Wikipedia (https://pl.wikipedia.org/wiki/Oracle_Corporation).

5) Information from the financial statements of Oracle America Inc., collected and grouped by Google Finance.

6) Tiobe Index for November 2016 and 2015.

7) List of available versions of the Oracle platform, listed by country.

8) List of all the Oracle America Inc. products available on the United Kingdom version of the Oracle platform.

9) Details about the Oracle Java SE Advanced product, available in the UK Oracle store, including the cost of the licence.

10) List of cloud services available in the UK Oracle store with the Java trade marks appearing alongside.

11) List of Oracle America Inc. local contacts worldwide.

12) Locations, addresses and contacts of Oracle Corporation UK Ltd. local field offices.

13) Brochure about the Oracle Partner Network.

14) Article entitled ‘Java EE, czyli nowa generacja Javy’, published in the Polish IT magazine Computerworld, dated 18/11/2010, along with a translation into English.

15) Information on the official JAVA website from the web page entitled ‘What is Java technology and why do I need it?’

16) Extracts from web pages entitled ‘Why do I see the Java Update Needed messages: Your Java version is out of date or Your Java version is insecure?’

17) Extracts showing the language selection on the official JAVA website.

18) Article entitled ‘Java and the three-tiered enterprise’, published in the UK annual business magazine Future Proof, issue 3 of 1996.

19) Article entitled ‘Back to basics: your guide to Java and Java Computing’, published in the UK annual business magazine Future Proof, issue 8 of 1998.

20) Article entitled ‘Prostota – klucz do sukcesu Javy?’, published in the Polish IT magazine Computerworld, dated 27/05/2015, along with a translation into English’.

21) Article entitled ‘El lenguaje de programación Java y la amenaza del HTML5’, published on the Spanish website hechosdehoy.com, dated 11/08/2014, along with a translation.

22) Article entitled ‘Oracle i społeczność programistów świętują 20-lecie Javy’, published on the Polish website magazynit.pl, dated 21/05/2015, along with a translation into English.

23) Article entitled ‘Oracle and the Community Celebrate 20 Years of Java’, published in the German online edition of the Wall Street Journal, dated 20/05/2015.

24) Article entitled ‘20 Jahre Java’, published in the German Linux-Magazine, dated 21/05/2015, along with a translation into English.

25) Article entitled ‘20 años con Java’, published on the Spanish website ciospain.es, dated 21/05/2015, along with a translation.

26) Article entitled ‘Java cumple 20 años como plataforma de desarrollo de software’, published in the Spanish magazine El Financiero, dated 27/05/2015, along with a translation.

27) Article entitled ‘Java cumple 20 años’, published in the Spanish magazine IT User, dated 21/05/2015, along with a translation.

28) Article entitled ‘Oracle y la comunidad celebran los 20 años de Java’, published on the Spanish website muycomputerpro.com, dated 21/05/2015, along with a translation.

29) Article entitled ‘Java memories – the good times and the bad’, published on the website jaxenter.com, dated 10/09/2015, along with a translation.

30) Article entitled ‘Oracle Unveils Latest Cloud Applications at Oracle OpenWorld’, published in the German online edition of the Wall Street Journal, dated 29/09/2014.

31) Article entitled ‘Oracle Announces New Innovations in Oracle Fusion Middleware, the Leading Cloud Platform for Today’s Digital Business’, published in the German online edition of the Wall Street Journal, dated 29/09/2014.

32) Article entitled ‘La historia de Java y el lanzamiento de Java 8’, published on the Spanish website muycomputerpro.com, dated 27/03/2014.

33) Article entitled ‘Oracle lanza Java 8’, published on the Spanish website muycomputerpro.com, dated 26/03/2014.

34) Article entitled ‘Azul Systems Launches Zulu for Docker/The first standards-compliant, freely redistributable Java SE 8 container on Docker’, published on the German website finanznachrichten.de, dated 23/09/2014.

35) Article entitled ‘Java 8 adoption rate higher than expected’, published on the website jaxenter.com, dated 22/10/2014.

36) Article entitled ‘SPEC Releases SPECjbb2015/Enhanced Java server benchmark sets new standard for measuring physical and virtual performance within a real-world usage model’, published on the German website finanznachrichten.de, dated 24/09/2015.

37) Article entitled ‘Survey of More Than 3,000 Developers Reveals Java 8 Adoption Ahead of Previous Forecasts’, published in the German online edition of the Wall Street Journal, dated 20/09/2014.

38) Article entitled ‘Oracle Highlights Continued Java SE Momentum and Innovation at JavaOne 2014’, published in the German online edition of the Wall Street Journal, dated 29/09/2014.

39) Article entitled ‘Oracle Introduces the Latest Release of Oracle Java ME Embedded’, published in the German online edition of the Wall Street Journal, dated 29/09/2014.

40) Article entitled ‘Oracle Shares Key Updates on Java Platform, Enterprise Edition, Introduces GlassFish Server Open Source Edition 4.1 at JavaOne 2014’, published in the German online edition of the Wall Street Journal, dated 29/09/2014.

41) Article entitled ‘Can anything slow the Java 8 train?’, published on the website TechRepublic.com, dated 21/10/2014.

42) Article entitled ‘Big Data jobs: 5 most in-demand skills’, published in the online edition of the UK magazine Computer Business Review, dated 27/11/2015.

43) Article entitled ‘Cloud-Computing jobs: 5 most in-demand skills’, published in the online edition of the UK magazine Computer Business Review, dated 30/11/2015.

44) Article entitled ‘2010’s most sought-after IT staff revealed’, published on the international blog blog.peopleperhour.com, dated 21/07/2010.

45) Article entitled ‘Razones para aprender a programar Java’, published on the website openwebinars.net, dated 11/04/2016.

46) Article entitled ‘Los lenguajes de programación que triunfarán en 2015’, published on the Spanish website muycomputerpro.com, dated 13/04/2015.

47) Article entitled ‘Why is Java so important to employers?’, published on the UK website jobsite.co.uk, dated 08/09/2014.

48) Press release entitled ‘Programming robots like the a pro – the new Roberta book introduces into Java programming’, published on the website of the German company Fraunhofer-Institut für Intelligente Analyse- und Informationssysteme, dated 28/05/2015, along with a translation.

49) Article entitled ‘El proyecto FIT4JOBS ha formado a 40 jóvenes en España’, published on the website of the Spanish Fundación Dédalo, dated 25/11/2015, along with a translation.

50) Information about a Java programming course published in the newspaper Kölnische Rundschau, dated 08/10/2015, along with a translation.

51) List of books about Java 8 available from the Spanish online bookstore casadellibro.com.

52) Java training offer on the Oracle University official website.

53) Responses by Quora forum users to the question ‘Is it worth getting an Oracle Certified Java Programmer for Java 6 (Exam 120851) qualification?’

54) Article entitled ‘Papier jednak ma znaczenie’, published in the Polish magazine Puls Biznesu, dated 24/04/2013, along with a translation.

55) Information about the Devoxx 2016 conference on the official website devoxx.be.

56) Information about the JavaOne 2016 conference on its official website, https://www.oracle.com/javaone/overview.html.

57) Article entitled ‘La apertura de la JavaOne 2014’, published on the Spanish website javahispano.org, dated 30/09/2014.

58) Article entitled ‘Oracle Highlights Continued Java SE Momentum and Innovation at JavaOne 2014’, published on the DMN Forum, dated 29/09/2014.

59) Article entitled ‘4 Compelling Reasons To Attend JavaOne’, published on the Forbes online platform, dated 18/08/2016.

60) Article entitled ‘Rusza Konkurs na innowacyjne aplikacje mobilne dla Warszawy’, published in the Polish magazine Computerworld, dated 30/04/2013, along with a translation.

61) Information about the Java Users Group on the Oracle America Inc. official website.

62) Article entitled ‘Rückblick der JUGH: “Lessons learned in Big-Data-Projekten mit Hadoop” mit Dominik Benz’, published on the German website openbroadcast.de, dated 26/09/2014, along with a translation.

63) General information about the Oracle Academy on the Oracle America Inc. official website.

64) Press release entitled ‘Oracle Joins the White House in Global Campaign to Empower Girls and Women’, published on the Oracle America Inc. official website.

65) Full course curriculum of the Oracle Academy.

66) Article entitled ‘Oracle Academy: Teaching teachers the skills for industry’, published on the UK website www.cbi.org.uk.

67) Featured interview in Oracle Magazine with the fictional Stark Industries CIO Brittany Carter, in which she confirms that Oracle Java Cloud Service is used in Stark Industries.

68) Information about JAVA Magazine on the Oracle America Inc. official website.

69) Article about Java on Wikipedia.

70) Article entitled ‘Los artículos mas visitados de Wikipedia actualmente’, published on the Spanish website spoitas.com, dated 14/11/2015, along with a translation.

71) Java brand status in the Brand Finance database.

72) Judgment of the Supreme Administrative Court of 23/11/2012, case No II GSK 1539/11.

73) Minutes of the conciliation hearing of case No XVI GCo 1276/13.

74) Settlement dated 18/06/2014 between Likesoft Sp. z o.o. and Oracle America Inc.

75) Third-party use guidelines for Oracle trade marks.

Having evaluated all the documents listed above, the Opposition Division concludes that the earlier trade marks have a reputation in the European Union for some of the goods and services on which the opposition is based and for which the opponent claimed reputation, namely for computer software in Class 9 and design and development of computer software; computer services, namely, providing consultation services and advice in the fields of computer software; leasing services (long-time rental) in the fields of computer software; design for others in the fields of computer software, installation, maintenance, and repair of computer software; computer programming; providing online information and news in the field of computer software, namely, providing, hosting, managing, developing, and maintaining applications, software, computer software in Class 42.

It is clear from the evidence that the earlier trade marks have been subject to long-standing and intensive use and are generally known in the relevant market, where they enjoy a consolidated position among the leading brands, as has been attested by diverse independent sources. The marketing expenditure and market share shown by the evidence and the various references in the press to its success all unequivocally show that the marks enjoy a high degree of recognition among the relevant public.

However, the evidence does not succeed in establishing that the earlier marks have a reputation for all the goods and services on which the opposition is based and for which reputation has been claimed.

For reasons of procedural economy, the Opposition Division finds it appropriate not to examine whether or not reputation has also been proven for the other goods and services for which reputation has been claimed.

The applicant did not dispute the reputation of the earlier trade marks.

3. The ‘link’ between the signs

As seen above, the earlier marks are reputed and the signs are similar. 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.

In the present case, as explained in detail in section a) above, both signs begin with the sequence of letters ‘JAV*’, rendering the signs visually and aurally similar to an average degree. Therefore, this commonality between the sole verbal elements of the signs, which are distinctive for the goods and services at issue, is of material importance when assessing the ‘link’ between the conflicting marks.

The earlier marks have a reputation for computer software in Class 9 and design and development of computer software; computer services, namely, providing consultation services and advice in the fields of computer software; leasing services (long-time rental) in the fields of computer software; design for others in the fields of computer software, installation, maintenance, and repair of computer software; computer programming; providing online information and news in the field of computer software, namely, providing, hosting, managing, developing, and maintaining applications, software, computer software in Class 42.

Before examining the opponent’s claims, it is appropriate to recall that the opposition is directed against the following goods and services:

Class 9: Computers, printers, shredders, office equipment and apparatus, scanners, copying machines, multifunctional copying apparatus, magnetic disks, computer software.

Class 35: Business auditing; Dissemination of advertisements, Data search in computer files for others; Cost price analysis; Direct mail advertising; Publicity columns preparation; Radio advertising; Bill-posting; Television advertising; Advertising by mail order; Dissemination of advertisements; Organisation of trade fairs for commercial or advertising purposes; Systemization of information into computer databases; Computerized file management; Business research, market research; Commercial outsourcing and consultancy, professional business consultancy, business management and organisation consultancy, business management consultancy; Sale of telecommunications apparatus, computer hardware, office machines and apparatus.

Class 42: Providing search engines for the internet, Installation of software; Providing space on servers (websites); Data conversion of computer programs and data (not physical conversion), conversion of data or documents from physical to electronic media; Creating and maintaining web sites for others; Computer system design, computer systems analysis; Computer software consultancy; Consultancy in the design and development of computer hardware; Server hosting, Monitoring of computer systems by remote access, upgrading, Maintenance and installation of computer systems; Consultancy in the field of information technology; Design, development and maintenance of computer databases.

The contested goods are various types of electronic devices and software in Class 9, computer services and other services, such as advertising and business services, in Class 35, and services related to software and technology in Class 42.

The opponent argues that ‘regardless of likelihood of confusion as to the origin of the goods and services of the applicant (supposedly derived directly or indirectly by the economic relations of the opponent), use of a sign confusingly similar to a trademark JAVA might bring unfair advantage to the applicant or be detrimental to the distinctive character or the repute of the earlier trade mark’.

The Opposition Division is of the opinion that there is a link between the opponent’s reputed goods and the contested goods and services.

The opponent’s goods and services and the contested goods and services are mostly similar, as they are related to the use of electronic devices, software technology, the internet, business management and administration, advertising, etc. This similarity is even stronger when various aspects of the internet and trade are concerned, in particular in relation to goods and services in Classes 9 and 42. The contested services in Class 35 are similar to the opponent’s reputed goods and services in that business services in the field of marketing are increasingly based on information technology solutions. Moreover, the opponent’s goods and services not only enable the provision of the contested services in Class 35, but also act as drivers for innovation in the CRM field. Consequently, consumers will be exposed to the contested sign in the same market segment in which the earlier mark is used, namely advanced electronic devices and IT services, as well as business solutions for data processing, communication and digital marketing.

Admittedly, some of the contested services are dissimilar to the opponent’s reputed goods and services; however, having regard to their natures and taking into account and weighing up all the relevant factors in the present case, the Opposition Division concludes that the gap between them is not very large and consequently there exists, at least prima facie, the possibility that the contested mark, when encountered in relation to all of the contested goods and services for which registration is sought, will bring to the mind of the relevant consumers the earlier marks.

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 signs, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further 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).

4. Risk of injury

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

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

∙        it is detrimental to the repute of the earlier mark;

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

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of 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.

The opponent claims the following:

(1) The registration of the contested trademark can bring unfair advantage for the applicant, because the recipient’s may choose its goods and services simply because they are considering the applicant as an entity affiliated or authorized by Oracle America Inc.

 (2) In effect the applicant of the contested sign will be using the renowned JAVA brand as a ‘vehicle’ for generating customer interest in its own similar goods and services since the contested EUTM obviously creates a link in the mind of a consumer drawing their mind to recollection of quality products and services they already know in that segment and consider to be market leader, i.e. products and services branded under the JAVA marks.

(3) The advantage for the applicant thus arises on one hand in the substantial savings on investment in promotion and publicity for its own goods in the EU territory, since it is able to ‘free ride’ on the investments already undertaken by the Opponent in the earlier brand. On the other hand, it benefits by creating an association of his mark to the JAVA branded services that is perceived as high quality, renowned and an icon, whereas the quality of the services of the applicant are completely unknown. In other words, it is the inclusion and recognition of the opponent’s mark that draws consumers to the applicant’s services when they otherwise would not have bought them.

(4) The applicant using a trademark similar to the renowned JAVA brand exploits the prestige build by the opponent for many years and enjoys the reflections of the positive message connected with the JAVA brand especially in the mind of the Polish, German, Spanish and UK public. Thus, above all, this is likely to allow the applicant to unduly benefit from the reputation of the JAVA brand.

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

Before examining the opponent’s claims, it is appropriate to recall that the opposition is directed against the following goods and services:

Class 9: Computers, printers, shredders, office equipment and apparatus, scanners, copying machines, multifunctional copying apparatus, magnetic disks, computer software.

Class 35: Business auditing; Dissemination of advertisements, Data search in computer files for others; Cost price analysis; Direct mail advertising; Publicity columns preparation; Radio advertising; Bill-posting; Television advertising; Advertising by mail order; Dissemination of advertisements; Organisation of trade fairs for commercial or advertising purposes; Systemization of information into computer databases; Computerized file management; Business research, market research; Commercial outsourcing and consultancy, professional business consultancy, business management and organisation consultancy, business management consultancy; Sale of telecommunications apparatus, computer hardware, office machines and apparatus.

Class 42: Providing search engines for the internet, Installation of software; Providing space on servers (websites); Data conversion of computer programs and data (not physical conversion), conversion of data or documents from physical to electronic media; Creating and maintaining web sites for others; Computer system design, computer systems analysis; Computer software consultancy; Consultancy in the design and development of computer hardware; Server hosting, Monitoring of computer systems by remote access, upgrading, Maintenance and installation of computer systems; Consultancy in the field of information technology; Design, development and maintenance of computer databases.

As seen above, the earlier trade marks were found to have a reputation for computer software in Class 9 and design and development of computer software; computer services, namely, providing consultation services and advice in the fields of computer software; leasing services (long-time rental) in the fields of computer software; design for others in the fields of computer software, installation, maintenance, and repair of computer software; computer programming; providing online information and news in the field of computer software, namely, providing, hosting, managing, developing, and maintaining applications, software, computer software in Class 42.

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 (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following points:

At the same time, the actions of the applicant are capable of creating a real harm to the reputation of the earlier marks by weakening its attractive character.

It needs to be noted that high and consistent quality and the image of stability of the services is particularly important for IT brand, since it is not uncommon in the modern market that the entire company is based on IT products and services including the sales, distribution and accounting systems and any error in the functioning of the IT infrastructure could cause serious consequences for the whole company.

By the fact of a registration of the contested application, the renowned JAVA trademarks will lose their high ability to distinguish goods and services connected with IT technology. Therefore, there is an obvious detriment when the earlier mark is no longer capable of arousing immediate association with the goods and services for which it is registered and used, since there are too many look-alikes on the market.

What is worth underlying, the fact that the applicant in the scope of its business activity use the programming language and other technologies signed by the JAVA trademarks does not mean that he could designate and distinguish its whole business activity by the sign which clearly refers to renown JAVA trademarks.

The opponent from many years carry out uniform and consistent policy regarding the proper use of its trademark, which gathered in the form of Terms and Conditions.

Bearing in mind the foregoing, it is considered that, in view of the similarity between the opponent’s reputed goods and services and the abovementioned contested goods and services, a substantial part of the public may choose the applicant’s goods and services in Classes 9, 35 and 42 in the belief that the contested sign is somehow linked to the opponent’s marks, thus misappropriating their commercial appeal and advertising value. This may stimulate sales of the applicant’s goods and services to a disproportionately high extent in comparison with the size of its own promotional investment and may thus lead to the unacceptable situation in which the applicant is allowed to ‘free-ride’ on the opponent’s investment in promoting and building goodwill for its marks.

Therefore, the Opposition Division considers that, in view of the substantial exposure of the relevant consumers to the opponent’s reputed earlier marks, there exists – in relation to the goods and services for which a reputation has been found and taking into account the similarity between the marks and the inherent degree of distinctiveness of the earlier marks – a high probability that the use without due cause of the contested trade mark in respect of all the abovementioned contested goods and services may lead to free-riding, that is to say, the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade marks.

Other types of injury

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

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade marks. It follows that there is no need to examine whether other types also apply.

5. Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods and services.

Given that the opposition is entirely successful under Article 8(5) EUTMR it is not necessary to examine the remaining grounds and earlier rights on which the opposition was based.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Francesca DRAGOSTIN

Birgit FILTENBORG

Erkki MÜNTER

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.