OPPOSITION DIVISION
OPPOSITION No B 2 472 036
Ladybird Books Limited, 80 Strand, London WC2R 0RL, United Kingdom
(opponent), represented by Potter Clarkson LLP, The Belgrave Centre, Talbot
Street, Nottingham NG1 5GG, United Kingdom (professional representative)
a g a i n s t
ISB Technology S.a.r.l, 70 Route de Hollerich, 1740 Luxembourg, (applicant),
represented by ISB Technology S.a.r.l, Mark Halstead, 6 Boulevard Pierre Dupong,
1430 Luxembourg (employee representative).
On 30/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 472 036 is partially upheld, namely for the following
contested goods and services:
Class 9: Information technology and audiovisual equipment; optical devices,
enhancers and correctors; recorded content; safety, security, protection and
signalling devices; educational apparatus and simulators; navigation, guidance,
tracking, targeting and map making devices.
Class 41: Education, entertainment and sports; publishing and reporting.
2. European Union trade mark application No 13 293 469 is rejected for all the
above goods and services. It may proceed for the remaining goods and
services.
3. Each party bears its own costs.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods and services of European
Union trade mark application No 13 293 469 ‘Ladybug Adventures’. The opposition is
based on European Union trade mark registration No 10 022 721 ‘LADYBIRD’ and on
international trade mark registration No 896 963 designating the European
Union. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.
Decision on Opposition No B 2 472 036 page: 2 of 12
SUBSTANTIATION – International trade mark registration No 896 963
designating the European Union
According to Article 76 (1) EUTMR (in the version in force at the time of
commencement of the adversarial part, now Article 95(1) EUTMR), in proceedings
before it the Office will examine the facts of its own motion; however, in proceedings
relating to relative grounds for refusal of registration, the Office is restricted in this
examination to the facts, evidence and arguments submitted 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 (in the version in force at the time of
commencement of the adversarial part), the Office will give the opposing party the
opportunity to submit 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 (in the version in force at the time of
commencement of the adversarial part), within the period referred to above, the
opposing party must also file evidence 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.
In particular, if the opposition is based on a registered trade mark that is not a
European Union trade mark, the opposing party must submit 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 version in force at the time of commencement of the
adversarial part).
In the present case, the notice of opposition was not accompanied by any evidence
as regards earlier international trade mark registration No 896 963 designating the
European Union on which the opposition is based.
On 12/02/2015, the opponent was given two months, commencing after the ending of
the cooling-off period, to submit the abovementioned material. This time limit expired
on 17/06/2015 and was further extended until 17/06/2017.
The opponent did not submit any evidence concerning the substantiation of the
earlier trade mark.
According to Rule 20(1) EUTMIR (in the version in force at the time of
commencement of the adversarial part), if until expiry of the period referred to in
Rule 19(1) EUTMIR (in the version in force at the time of commencement of the
adversarial part), the opposing party has not proven the existence, validity and scope
of protection of its earlier mark or earlier right, as well as its entitlement to file the
opposition, the opposition will be rejected as unfounded.
The opposition must therefore be rejected as unfounded, as far as it is based on this
earlier mark.
Decision on Opposition No B 2 472 036 page: 3 of 12
LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the
goods or services in question, under the assumption that they bear the marks in
question, come from the same undertaking or, as the case may be, from
economically linked undertakings. Whether a likelihood of confusion exists depends
on the appreciation in a global assessment of several factors, which are
interdependent. These factors include the similarity of the signs, the similarity of the
goods and services, the distinctiveness of the earlier mark, the distinctive and
dominant elements of the conflicting signs, and the relevant public.
a) The goods and services
The goods and services on which the opposition is based are the following:
Class 9: Apparatus and instruments for the recording or reproducing of sound or
images; magnetic data carriers; electronic games; computer hardware and software;
downloadable applications; CD ROMs; DVDs; disks; tapes and cassettes, sound
and/or video recordings; electronic publications; parts and fittings for all of the
aforesaid goods.
Class 16: Books; printed publications; card and card products; stationery;
photographs; notebooks; note pads; pens; envelopes; pencils; office requisites; book
binding materials; adhesives; artists’ materials; paint brushes; instructional and
teaching material; plastic material for packaging; parts and fittings for all of the
aforesaid goods.
Class 28: Children’s toys, namely, play books; textile books; jigsaws; cuddly toys;
board games; playing cards; educational or learning toys; sports toys; part and
fittings for all of the aforesaid goods.
Class 41: Education and training services; nursery services; entertainment services;
publishing services.
The contested goods and services are the following:
Class 9: Apparatus, instruments and cables for electricity; devices for treatment
using electricity; diving equipment; information technology and audiovisual
equipment; magnets, magnetizers and demagnetizers; measuring, detecting and
monitoring instruments, indicators and controllers; navigation, guidance, tracking,
targeting and map making devices; optical devices, enhancers and correctors;
recorded content; safety, security, protection and signalling devices; scientific
research and laboratory apparatus, educational apparatus and simulators.
Class 35: Advertising, marketing and promotional services; business analysis,
research and information services; business assistance, management and
administrative services; commercial trading and consumer information services.
Class 41: Education, entertainment and sports; publishing and reporting; translation
and interpretation.
An interpretation of the wording of the list of goods and services is required to
determine the scope of protection of these goods and services.
Decision on Opposition No B 2 472 036 page: 4 of 12
The term ‘namely’, used in the opponent’s list of goods and services to show the
relationship of individual goods and services to a broader category, is exclusive and
restricts the scope of protection only to the goods specifically listed.
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,
goods or services are not regarded as being similar to or dissimilar from each other
on the ground that they appear in the same or different classes under the Nice
Classification.
The relevant factors relating to the comparison of the goods or services include, inter
alia, the nature and purpose of the goods or services, the distribution channels, the
sales outlets, the producers, the method of use and whether they are in competition
with each other or complementary to each other.
Contested goods in Class 9
The contested information technology equipment includes devices that have a
primary function related to the collection, transfer, storage, or processing of data and
to that extent, it includes, as a broader category the opponent’s computer hardware.
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 audiovisual equipment includes, as a broader category the opponent’s
apparatus and instruments for the recording or reproducing of sound or images.
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 optical devices include, as a broader category, or overlap with, the
opponent’s apparatus and instruments for the recording or reproducing of sound.
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 recorded content includes, as a broader category the opponent’s
sound and/or video recordings. 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 safety, security, protection and signalling devices include as a broader
category, or overlap with the opponent’s apparatus and instruments for the
reproducing of sound because both categories include, for example, acoustic alarms.
Therefore, they are identical.
The contested educational apparatus and simulators include, as a broader category,
or overlap with the opponent’s apparatus and instruments for the reproducing of
sound. 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 navigation, guidance, tracking, targeting and map making devices
overlap with the opponent’s computer hardware and software since both categories
of products include navigation apparatus for vehicles [on-board computers].
Therefore, they are identical.
The contested apparatus, instruments and cables for electricity; devices for treatment
using electricity; diving equipment; magnets, magnetizers and demagnetizers;
Decision on Opposition No B 2 472 036 page: 5 of 12
measuring, detecting and monitoring instruments, indicators and controllers; scientific
research and laboratory apparatus; (optical) enhancers and correctors are dissimilar
to any of the opponent’s goods and services as they have different purposes and
they are not complementary nor in competition. Furthermore, they have different
producers and are provided through different undertakings.
Contested services in Class 35
The contested services in Class 35 are services provided by persons or
organizations that directly assist in the operation and management of another
commercial or industrial enterprise. They are dissimilar to any of the opponent’s
goods and services in Classes 9, 16, 28 and 41 since they have different natures,
purposes and methods of use. Furthermore, they are neither complementary nor in
competition and they are provided through different undertakings. Finally, they are
not addressed to the same public.
Contested services in Class 41
The contested education, entertainment; publishing are identically contained in both
lists of services.
The contested sports are similar to the opponent’s entertainment services as they
have the same purpose. They can also coincide in end user and distribution
channels.
The contested reporting is the act of reporting news or other events of general
interest. The opponent’s publishing services is the activity of making information
available to the general public. To that extent these services are similar since they
have similar natures and purposes. They are also complementary and might be
provided through the same distribution channels.
The contested translation and interpretation are dissimilar to any of the opponent’s
services in Class 41 and to any of the remaining goods in Classes 9, 16 and 28 since
they have different natures, purposes and methods of use. Furthermore, they are
neither complementary nor in competition and they are provided through different
undertakings. Finally, they are not addressed to the same public.
b) Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be
reasonably well informed and reasonably observant and circumspect. It should also
be borne in mind that the average consumer’s degree of attention is likely to vary
according to the category of goods or services in question.
In the present case, the goods and services found to be identical or similar are
directed at the public at large and at business customers with specific professional
knowledge or expertise.
The public’s degree of attentiveness may vary from average to high, depending on
the price, specialised nature, or terms and conditions of the goods and services
purchased.
Decision on Opposition No B 2 472 036 page: 6 of 12
c) The signs
LADYBIRD Ladybug Adventures
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).
The unitary character of the European Union trade mark means that an earlier
European Union trade mark can be relied on in opposition proceedings against any
application for registration of a European Union trade mark that would adversely
affect the protection of the first mark, even if only in relation to the perception of
consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam,
EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the
relevant public of the European Union is sufficient to reject the contested application.
A ‘ladybird’ in the earlier mark is the British word for a small beetle with a domed
back, typically red or yellow with black spots. A ‘ladybug’, in the contested sign, is the
term used in North American to refer to the same insect and it will be understood as
such by the English-speaking part of the relevant territory. Consequently, the
Opposition Division finds it appropriate to focus the comparison of the signs on this
part of the public, namely, the English-speaking part of the public, which understands
these words and to whom these words are distinctive to a normal degree since they
have no relation at all with the goods and services at hand. On the other hand,
‘adventures’ in the contested sign is non-distinctive for services such as
‘entertainment and sports’. However, contrary to the opponent’s argument, it is
distinctive in relation to goods and services such as information technology
equipment and publishing and reporting.
Visually and aurally, the signs coincide in the letters/sounds ‘LADYB*’ and differ in
the letters/sounds ‘*UG’ at the end of the first word of the contested sign and in the
letters/sounds ‘*IRD’ at the end of the earlier mark. It is worth mentioning that the
sound of the letters ‘UG’ and ‘IRD’ are not so far apart in English as the respective
vowels will be pronounced in a similar way. The signs also differ in the word/sound
‘adventures’ of the contested sign that has no counterpart in the earlier mark and that
is non-distinctive in relation to some of the services at hand. In any case, since the
public reads from left to right, the part placed at the left of the sign (the initial part) is
the one that first catches the attention of the reader. This is why consumers will not
focus as much on the word ‘adventures’, which is placed in the second position in the
contested sign, as on the first word.
Therefore, the signs are visually and aurally similar to an average degree at least.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. As both signs will be perceived as referring to a
Decision on Opposition No B 2 472 036 page: 7 of 12
small beetle and taking into consideration the additional concept of ‘adventures’ in
the contested sign, the signs are conceptually highly similar.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account
in the global assessment of likelihood of confusion.
According to the opponent, the earlier mark has been extensively used and enjoys an
enhanced scope of protection. However, for reasons of procedural economy, the
evidence filed by the opponent to prove this claim does not have to be assessed in
the present case (see below in ‘Global assessment’).
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its
distinctiveness per se. In the present case, the earlier trade mark as a whole has no
meaning for any of the goods and services in question from the perspective of the
public in the relevant territory, namely, the English-speaking public. Therefore, the
distinctiveness of the earlier mark must be seen as normal.
e) Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on
numerous elements and, in particular, on the recognition of the earlier mark on the
market, the association which can be made with the registered mark, the degree of
similarity between the marks and between the goods or services identified (recital 8
of the EUTMR). It must be appreciated globally, taking into account all factors
relevant to the circumstances of the case (22/06/1999, C342/97, Lloyd Schuhfabrik,
EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).
In the present case, the goods and services are partly identical, partly similar and
partly dissimilar. The signs are visually and aurally similar to an average degree at
least and conceptually highly similar on account of the fact that most of the earlier
mark is reproduced at the beginning of the contested sign and that both signs will
bring to mind the distinctive concept of a ladybird. Although the additional word in the
contested sign is distinctive in relation to some of the goods and services, as
mentioned in part c), consumers generally tend to focus on the beginning of a sign
when they encounter a trade mark and will therefore not pay as much attention to this
term as to the first one.
Account is taken of the fact that average consumers rarely have the chance to make
a direct comparison between different marks, but must trust in their imperfect
recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323,
§ 26). Even consumers who pay a high degree of attention need to rely on their
imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605,
§ 54).
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.
Decision on Opposition No B 2 472 036 page: 8 of 12
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the English-speaking part of the public and therefore the
opposition is partly well founded on the basis of the opponent’s European Union
trade mark registration No 10 022 721. As stated above in section c) of this decision,
a likelihood of confusion for only part of the relevant public of the European Union is
sufficient to reject the contested application.
It follows from the above that the contested trade mark must be rejected for the
goods and services found to be identical or similar to those of the earlier trade mark.
The rest of the contested goods and services are dissimilar. As similarity of goods
and services is a necessary condition for the application of Article 8(1) EUTMR, the
opposition based on this Article and directed at these goods and services cannot be
successful.
REPUTATION — ARTICLE 8(5) EUTMR
According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered
earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade
mark will not be registered where it is identical with, or similar to, an earlier trade
mark, irrespective of whether the goods or services for which it is applied are
identical with, similar to or not similar to those for which the earlier trade mark is
registered, where, in the case of an earlier European Union trade mark, the trade
mark has a reputation in the Union or, in the case of an earlier national trade mark,
the trade mark has a reputation in the Member State concerned and where the use
without due cause of the contested trade mark would take unfair advantage of, or be
detrimental to, the distinctive character or the repute of the earlier trade mark.
Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when
the following conditions are met.
The signs must be either identical or similar.
The opponent’s trade mark must have a reputation. The reputation must also
be prior to the filing of the contested trade mark; it must exist in the territory
concerned and for the goods and/or services on which the opposition is
based.
Risk of injury: use of the contested trade mark would take unfair advantage
of, or be detrimental to, the distinctive character or repute of the earlier trade
mark.
The abovementioned requirements are cumulative and, therefore, the absence of
any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR
(16/12/2010, T-345/08 & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41).
However, the fulfilment of all the abovementioned conditions may not be sufficient.
The opposition may still fail if the applicant establishes due cause for the use of the
contested trade mark. In the present case, the applicant did not claim to have due
cause for using the contested mark. Therefore, in the absence of any indications to
the contrary, it must be assumed that no due cause exists.
Decision on Opposition No B 2 472 036 page: 9 of 12
In the present case, the applicant did not claim to have due cause for using the
contested mark. Therefore, in the absence of any indications to the contrary, it must
be assumed that no due cause exists.
a) Reputation of the earlier trade mark
According to the opponent, the earlier trade mark has a reputation in the European
Union. The opponent argues that the trade mark ‘LADYBIRD’ is protected in the
United Kingdom and in Europe since 1915 and that it has been used for over 100
years, in particular for books.
Reputation implies a knowledge threshold that 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 24/09/2014. Therefore,
the opponent was required to prove that the trade mark on which the opposition is
based had acquired a reputation in the European Union prior to that date. The
evidence must also show that the reputation was acquired for the goods and services
for which the opponent has claimed reputation, namely:
Class 9: Apparatus and instruments for the recording or reproducing of sound or
images; magnetic data carriers; electronic games; computer hardware and software;
downloadable applications; CD ROMs; DVDs; disks; tapes and cassettes, sound
and/or video recordings; electronic publications; parts and fittings for all of the
aforesaid goods.
Class 16: Books; printed publications; card and card products; stationery;
photographs; notebooks; note pads; pens; envelopes; pencils; office requisites; book
binding materials; adhesives; artists’ materials; paint brushes; instructional and
teaching material; plastic material for packaging; parts and fittings for all of the
aforesaid goods.
Class 28: Children’s toys, namely, play books; textile books; jigsaws; cuddly toys;
board games; playing cards; educational or learning toys; sports toys; part and
fittings for all of the aforesaid goods.
Class 41: Education and training services; nursery services; entertainment services;
publishing services.
As a consequence of the partial refusal following the above assessment under
Article 8(1)(b) EUTMR, the opposition is still directed against the following goods and
services that were found to be dissimilar:
Class 9: Apparatus, instruments and cables for electricity; devices for treatment
using electricity; diving equipment; magnets, magnetizers and
demagnetizers; measuring, detecting and monitoring instruments,
indicators and controllers; scientific research and laboratory apparatus;
enhancers and correctors.
Class 35: Advertising, marketing and promotional services; business analysis,
research and information services; business assistance, management
and administrative services; commercial trading and consumer
information services.
Decision on Opposition No B 2 472 036 page: 10 of 12
Class 41: Translation and interpretation.
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 09/06/2017 the opponent submitted the following evidence:
Appendix 3:
An extract from the Wikipedia titled ‘Ladybird Books’ about the beginning of
the book publishing company back in 1867 and its history until today.
A list of the ‘Ladybird’ book collection
Extract of a website where children books and ‘apps’ can be purchased.
An article published in ‘The Guardian’ on 21/02/2017 titled ‘The Ladybird
phenomenon: the publishing craze that’s still flying’. The article explains how
the Ladybird books have become a phenomenon in the United Kingdom and
how other imprint companies took advantage of the situation.
An article published in the ‘Mirror Online’, from the Daily Mirror, on 31/01/2013
titled ‘The Ladybird lady: Bookworm has amazing hoard of 7 500 of the iconic
books in her collection’. It is about a lady, Helen Day, labelled the Ladybird
lady because amongst her huge collection of books, 1 500 are Ladybird
books. The article indicates that the most popular vintage Ladybird books are
fairy tales such as ‘Sleeping Beauty’, that the first edition of ‘Cinderella’ is
worth 100 GBP and that the ‘Peter and Jane’ books have helped generations
to learn to read.
An article published in the ‘License Global’ magazine dated 4/02/2014 titled
‘Penguin to Fete Ladybird’s 100
th
’ about the celebration of the 100
th
anniversary of the Ladybird books imprint and of the Ladybird logo in 2015.
Appendix 4:
Extracts from an unknown origin showing the ‘LADYBIRD’ trade mark
registrations in several countries within and outside Europe.
Appendix 5:
An article published in the Financial Times online, www.ft.com, on 4/05/2007
titled ‘Ladybird books, Adventurous Investor’ about Helen Day and the huge
number of Ladybird books she collects. The article also mentions that
‘Ladybird’ belongs to Penguin, owned by Pearson, which also owns the
Financial Times.
An article published in www.thisismoney.co.uk on 24/10/2015 about the
evolution of the Ladybird books and about the collector Helen Day. The
articles says that many people now in their 40s, 50s and 60s read ‘The Three
Little Pigs’, ‘The Magic Porridge Pot’ or ‘The Elves and the Shoemaker’ and,
in turn, have read these stories to their children and grandchildren. It also
says that the Ladybird editions were so popular that they were later printed in
their millions.
Appendix 6:
An article of unknown source dated 27/03/2013 titled ‘Peppa Pig App
downloads soar past one million mark’. Entertainment One is celebrating the
one million downloads of the Peppa Pig App.
Decision on Opposition No B 2 472 036 page: 11 of 12
The Opposition Division finds that the evidence submitted by the opponent does not
demonstrate that the earlier trade mark acquired a reputation.
As far as the Wikipedia article is concerned, it must be noted that the Wikipedia is a
free encyclopaedia where anyone can create and edit articles. Even if references to
support Wikipedia articles must be indicated, the source of the article itself remains
unknown and it cannot be determined that it is from independent third parties. In any
event, the article provided is about the history of the Ladybird books company from
its origin until 2016 but does not show the degree of knowledge of the ‘Ladybird’
trade mark among the public. The same happens with the list of the ‘Ladybird’ book
collection and the extract of a website where children books and ‘apps’ can be
purchased. They are a mere list of books and a mere extract of a website where
books and apps can be purchased and probably coming from Ladybird itself.
The articles published in the Mirror Online, in the Financial Times online and in
www.thisismoney.co.uk only show the perspective of a single person who, despite
being an important collector of Ladybird books, is not sufficient to determine that the
trade mark is recognize by a relevant part of the public. Moreover, as indicated
above, Penguin, that owns ‘Ladybird’, and the Financial Times both belong to the
same group, Pearson. Therefore, the article is not coming from an independent
source.
The articles in the Mirror Online and in www.thisismoney.co.uk are also intended to
show the impact some popular books such as the Sleeping Beauty, Cinderella, Peter
and Jane, The Three Little Pigs, The Magic Porridge Pot or The Elves and the
Shoemaker have had on generations of family. To this, the Opposition Division must
stress that the fact that the books (in the meaning of ‘stories’) that are published by
the opponent are reputed does not imply the automatic recognition of the trade mark
‘Ladybird’ which is the book publishing company. Even if the title used in the
Guardian, ‘The Ladybird phenomenon’ seem to refer to the brand Ladybird itself, the
article explains how the books that have been published by Ladybird have become a
phenomenon. Likewise, the number of downloads of the Peppa pig App do not show
that the Ladybird trade mark itself is reputed.
The article in the ‘License Global’ and the list of trade mark registrations intend to
show the longevity of the trade mark and how it expanded across the world.
However, even if it is a sign of the acceptance of the trade mark and its goods and/or
services by the public, it does not demonstrate that it is reputed in the sense of Article
8(5) EUTMR.
As a result, and taking further into account the absence of evidence indicating the
sales volumes, the market share of the trade mark or the extent to which the trade
mark has been promoted none of the evidence submitted by the opponent shows the
degree of recognition of the trade mark by a significant part of the public. Under
these circumstances, the Opposition Division concludes that the opponent failed to
prove that its trade mark has a reputation.
As seen above, it is a requirement for the opposition to be successful under
Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been
established that the earlier trade mark has a reputation, one of the necessary
conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be
rejected.
Decision on Opposition No B 2 472 036 page: 12 of 12
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
EUTMR, where each party succeeds on some heads and fails on others, or if
reasons of equity so dictate, the Opposition Division will decide a different
apportionment of costs.
Since the opposition is successful for only some of the contested goods and
services, both parties have succeeded on some heads and failed on others.
Consequently, each party has to bear its own costs.
The Opposition Division
Martina GALLE Sandra IBAÑEZ Steve HAUSER
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 EUTMR, notice of appeal
must be filed in writing at the Office within two months of the date of notification of
this decision. It must be filed in the language of the proceedings in which the decision
subject to appeal was taken. Furthermore, a written statement of the grounds for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.