OPPOSITION DIVISION
OPPOSITION No B 1 830 077
Pepsico, Inc., 700 Anderson Hill Road, Purchase New York 10577-1444, United
States of America (opponent), represented by Bomhard IP, S.L., C/Bilbao, 1, 5º,
03001 Alicante, Spain (professional representative)
a g a i n s t
Guilin Layn Natural Ingredients Corp., Xiangjiang Rd., Xing'an Town, Xing'an
County, Guilin, Guangxi, People's Republic of China (holder), represented by HGF
Limited, 1 City Walk, Leeds, Leeds LS11 9DX, United Kingdom (professional
representative).
On 04/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 1 830 077 is upheld for all the contested goods.
2. International registration No 1 041 728 is entirely refused protection in respect
of the European Union.
3. The holder bears the costs, fixed at EUR 650.
Preliminary Remark
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS:
The opponent filed an opposition against all the goods (in Classes 30 and 32) of
international registration designating the European Union No 1 041 728 (figurative
mark: “ ”). The opposition is based on the following earlier trade marks:
1. European Union trade mark registration No 278 580 (word mark: “LAY'S”) for
goods in Classes 29 and 30;
2. European Union trade mark registration No 3 810 603 (figurative mark:
Decision on Opposition No B 1 830 077 page: 2 of 13
“ ”) for goods in Classes 29 and 30;
3. Spanish trade mark registration No 2 048 822 (word mark: “LAY'S”) for goods
in Class 29;
4. Spanish trade mark registration No 2 048 823 (word mark: “LAY'S”) for goods
in Class 30.
The opponent invoked Article 8(1)(b) and 8(5) EUTMR.
Preliminary Remark
The two earlier German trade marks No 395 51 680 and 395 51 681 initially invoked,
were withdrawn by letter of the opponent of 16/09/2016.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of
filing of the opposition, now Article 47(2) and (3) EUTMR), if the applicant so
requests, the opponent must furnish proof that, during the five-year period preceding
the date of publication of the contested trade mark, the earlier trade mark has been
put to genuine use in the territories in which it is protected in connection with the
goods or services for which it is registered and which the opponent cites as
justification for its opposition, or that there are proper reasons for non-use. The
earlier mark is subject to the use obligation if, at that date, it has been registered for
at least five years.
The same provision states that, in the absence of such proof, the opposition will be
rejected.
For international registrations designating the European Union, the ‘date of
publication’ of the contested mark within the meaning of Article 42(2) EUTMR (in the
version in force at the time of filing of the opposition, now Article 47(2) EUTMR), that
is to say for the purposes of establishing the five-year period of use obligation for the
earlier mark, is considered to be six months after the first republication of the
international registration, which corresponds to the beginning of the opposition period
(Article 156 EUTMR in conjunction with Article 152 EUTMR, in the version in force at
the time of filing of the opposition, now Article 196 EUTMR in conjunction with Article
190 EUTMR). The earlier mark is subject to the use obligation if, at that date, it has
been registered for at least five years.
The holder requested that the opponent submit proof of use of the trade marks on
which the opposition is based, namely the above cited European Union and Spanish
trade marks.
The relevant date for the contested international mark is, as correctly pointed out by
the holder, the 12/01/2011. The opponent was therefore required to prove that the
trade marks on which the opposition is based were put to genuine use in the
European Union (incl. Spain) from 12/01/2006 to 11/01/2011 inclusive.
Furthermore, the evidence must show use of the trade marks for the goods on which
Decision on Opposition No B 1 830 077 page: 3 of 13
the opposition is based, namely the following:
European Union trade mark registration No 278 580
Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked
fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible
oils and fats; potato chips; potato crisps; nuts, prepared.
Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and
preparations made from cereals; bread, pastry and confectionery, ices; honey,
treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices;
ice.
European Union trade mark registration No 3 810 603
Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked
fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible
oils and fats; ready to eat snack foods consisting primarily of potatoes, nuts, other
fruit or vegetable materials or combinations thereof including potato chips, potato
crisps, taro chips, pork snacks, beef snacks.
Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and
preparations made from cereals, bread, pastry and confectionery, ices; honey,
treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices;
ice; ready to eat snack foods consisting primarily of grains, corn, cereal, other
vegetable materials or combinations thereof, including corn chips, tortilla chips, rice
chips or rice cakes, crackers, pretzels, puffed snacks, popped popcorn, candied
popcorn and peanuts, snack food dipping sauces, salsas, snack bars.
Spanish trade mark registration No 2 048 822
Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked
fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible
oils and fats; and in particular potato chips, fried potatoes and fried corn.
Spanish trade mark registration No 2 048 823
Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and
preparations made from cereals, bread, pastry and confectionery, ices; honey,
treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices;
ice; and in particular cheese flauvoured dumplings.
According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before
01/10/2017), the evidence of use must consist of indications concerning the place,
time, extent and nature of use of the opposing trade mark for the goods or services in
respect of which it is registered and on which the opposition is based.
On 11/05/2016, in accordance with Article 10(2) EUTMDR (former Rule 22(2)
EUTMIR, in force before 01/10/2017), the Office gave the opponent until 16/07/2016
to submit evidence of use of the earlier trade mark. This time limit has been extended
until 16/09/2016 (see Office´s letter of 20/07/2016)
On 16/09/2016, within the time limit, the opponent did not file any additional proof of
use. The opponent refers to the documents which were filed during the time limit
allowed for substantiation of the opposition. They will be taken into account as
Decision on Opposition No B 1 830 077 page: 4 of 13
evidence of proof of (see Office´s letter of 30/09/2016).
As the opponent requested to keep certain commercial data contained in the
evidence confidential vis-à-vis third parties, the Opposition Division will describe the
evidence only in the most general terms without divulging any such data.
This evidence is the following:
PepsiCo 2005, 2006, 2007 and 2011 Annual Reports showing ‘LAY’s’ Potato
Chips as one of its main brands.
Decisions of the Spanish National Office confirming the notoriety of ‘LAY’S’
brand, the latest from 2014.
Survey on the mark’s recognition conducted by Millward Brown in 2007 for the
Spanish territory, regarding the TV advertising campaign for ‘Lay’s’ brand used
for potato chips.
Affidavit of Joseph J. Ferretti, an Assistant Secretary of PepsiCo, Inc. dated
29/01/2016 which states that ‘LAY’S’ brand is a very important component of
their snack food business and is one of the world’s most famous brand for
salted snacks. It refers to the brand’s history, the Annual Report for 2014, the
sales figures and the advertising expenditures for years 1998-2013. The
affidavit is accompanied by a long list of global registrations of the ‘LAY’S’
brand, product packaging in different languages and advertisements which
however, mostly refer to undefined territories or to territories clearly outside of
the EU. The submitted articles are dated from 1995-1997 which is before the
registration dates of the marks in question. The Euromonitor International
certificate claims ‘LAY’S’ as the world’s No 1 brand for Chips/Crisps retail value
sales in 2008.
Affidavit of Carmen Neira Fernandez, the Senior Legal Counsel of PepsiCo
Southwest Europe dated 18/02/2016. It refers to the brand’s history in Spain,
sales volumes, market share and advertising expenditures for years 2008-2015
and the 2010 and 2014 campaign that featured Lionel Messi. It shows that
‘LAY’S’ has a considerable market share in Spain for potato chips.
Affidavit of Wim A.B. Destoop, General Manager of PepsiCo Nederland B.V.
according to which the LAY’S brand was launched in the Netherlands in 2001.
It also refers to significant sales volumes and advertising expenditures for years
2008-2015.
Numerous promotion materials in Dutch showing ‘LAY’S’ brand on potato chips
packaging.
Numerous press clipping in Spanish with partial translation of relevant parts
such as: article in Spanish with the partial translation into English published on
www.marketingdirecto.com dated 17/02/2016 about leading mass consumption
trade marks (‘las marcas líderes’) enumerating ‘LAY’S as one of the very
famous marks for potato chips.
Pictures of products, namely potato chips bearing the trade mark in question.
Examples of the presence of ‘LAY’S’ brand in social media such as Facebook,
YouTube and Twitter.
DVD with some examples of TV advertisements of ‘LAY’S’ potato chips in
Spanish.
Considerable advertising expenditures for the promotion of ‘LAY’S’ brand in
Spain in years 2007 and 2008 confirmed by a branding agency for potato chips.
As far as the affidavits are concerned, Article 10(4) EUTMDR (former Rule 22(4)
EUTMIR, in force before 01/10/2017) expressly mentions written statements referred
to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f)
Decision on Opposition No B 1 830 077 page: 5 of 13
EUTMR lists means of giving evidence, amongst which are sworn or affirmed written
statements or other statements that have a similar effect according to the law of the
State in which they have been drawn up. As far as the probative value of this kind of
evidence is concerned, statements drawn up by the interested parties themselves or
their employees are generally given less weight than independent evidence. This is
because the perception of the party involved in the dispute may be more or less
affected by its personal interests in the matter. However, this does not mean that
such statements do not have any probative value at all. The final outcome depends
on the overall assessment of the evidence in the particular case. This is because, in
general, further evidence is necessary to establish use, since such statements have
to be considered as having less probative value than physical evidence (labels,
packaging, etc.) or evidence originating from independent sources. Bearing in mind
the foregoing, it is necessary to assess the remaining evidence to see whether or not
the contents of the declaration are supported by the other items of evidence.
According to Article 18(1), second subparagraph, point (a), EUTMR, the following will
also constitute use within the meaning of paragraph 1: use of the European Union
trade mark in a form differing in elements that do not alter the distinctive character of
the mark in the form in which it was registered, regardless of whether or not the trade
mark in the form as used is also registered in the name of the proprietor. When
examining the use of an earlier registration for the purposes of Article 47(2) and (3)
EUTMR, Article 18 may be applied by analogy to assess whether or not the use of
the sign constitutes genuine use of the earlier mark as far as its nature is concerned.
In the present case, the sign as used in the above cited figurative form is acceptable,
because it does not alter the distinctive character of the mark in the form in which it
was registered. In view of the above, the Opposition Division considers that the
evidence does show use of the sign as registered within the meaning of Article 18(1),
second subparagraph, point (a), EUTMR.
Taking into account the evidence in its entirety, the evidence submitted by the
opponent is sufficient to prove genuine use of the earlier figurative trade mark during
the relevant period in the relevant territory. The above cited documemts, such as the
survey, pressclips and advertising expenditures, give sufficient information as regards
place, time, extent and nature of use, but only in Spain. They are also sufficient to
prove a reputation of this earlier trade mark in Spain (see in particular the above cited
survey, affidavits, promotion material and advertising).
For the other earlier trade marks, sufficient evidence has not been submitted.
Documents that could prove use, such as invoices, turnover, sales figures,
advertisement, extracts from tax accounts and/or commercial balance sheets, have
not been submitted. Other relevant documents, such as affidavits, declarations by
professional associations and evidence of market share, are also missing. The
documents submitted are, at best, suitable for use as supplementary material.
However, the evidence filed by the opponent does not show genuine use of the trade
mark for all the goods covered by the earlier trade mark.
According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation
to only some of the goods or services for which it is registered it will, for the purposes
of the examination of the opposition, be deemed to be registered in respect only of
those goods or services.
In the present case the evidence shows genuine use of the figurative trade mark for
the goods potato chips in Class 29.
Decision on Opposition No B 1 830 077 page: 6 of 13
Therefore, the Opposition Division will only consider the abovementioned goods in its
further examination of the opposition.
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.
Preliminary Remark
However, as reputation has been proven only in Spain, the analysis below focuses
on the Spanish public.
a) The signs
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Earlier trade mark Contested sign
The relevant territory is Spain.
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 signs are figurative marks. The figurative elements of the earlier trade mark are
composed of the word ‘Lay’s’ depicted in fairly stylised font in white bold letters on a
yellow circle which is surrounded by a red ribbon. The contested sign has no colours
and is depicted in standard bold letters with the exception of the letter “y” which is
written in a special typeface.
The elements ‘LAY’S’ of the earlier mark and ‘LAYN’ of the contested sign have no
meaning for the relevant public and are, therefore, distinctive.
The contested sign has no elements that could be considered clearly more distinctive
than other elements.
The ribbon depicted in the earlier mark is a decorative and very common element
and therefore it is considered to be of limited distinctiveness.
The marks have no elements that could be considered clearly more dominant than
other elements.
When signs consist of both verbal and figurative components, in principle, the verbal
component of the sign usually has a stronger impact on the consumer than the
figurative component. This is because the public does not tend to analyse signs and
will more easily refer to the signs in question by their verbal element than by
describing their figurative elements (14/07/2005, T 312/03, Selenium-Ace,
EU:T:2005:289, § 37).
Visually, the signs differ in their figurative elements and in the additional colours of
the earlier trade mark. They coincide in the letters ‘LAY’, although depicted in
different typeface and colour. They also differ as regards the apostrophe and the final
letter ‘S’ of the earlier sign and the letter ‘N’ of the contested sign.
Aurally, the figurative elements and the apostrophe of the earlier trade mark will not
be pronounced. The signs coincide in the letters ‛LAY’ present identically in both
signs. They differ in the final letter ‘S’ of the earlier trade mark and in the ‘N’ of the
contested sign. As they are monosyllabic, they have a very similar sound, rhythm and
pronunciation.
Decision on Opposition No B 1 830 077 page: 8 of 13
Conceptually, neither of the signs has a meaning for the public in the relevant
territory. Since a conceptual comparison is not possible, the conceptual aspect does
not influence the assessment of the similarity of the signs.
Taking into account the abovementioned visual and aural coincidences, the signs
under comparison are similar.
b) Reputation of the earlier trade mark
According to the opponent, the earlier trade mark has a reputation in the European
Union.
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 EU was designated in the contested international registration
on 08/07/2010. 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 also showed that the reputation was acquired for the
goods for which the opponent has claimed, namely for potato chips in Class 29 (see
above).
c) The ‘link’ between the signs
As seen above, the earlier mark is reputed and the signs are similar to some extent.
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.
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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.
Before examining the existence of the link, the Opposition Division finds it useful to
note that the opposition is directed against the following goods:
Class 30: Coffee; tea; natural sweetener; sweetmeats; nutritional capsules for non-
medical purposes; biscuits; instant rice; sauces; leaven; aromatic preparations for
food.
Class 32: Beer; non-alcoholic fruit extracts; non-alcoholic beverages; soda drink;
preparations for making beverages; essences for making beverages.
The opponent has proven reputation for potato chips.
The establishment of such a link, while triggered by similarity (or identity) between
the signs, requires that the relevant sections of the public for each of the goods and
services covered by the trade marks in dispute are the same or overlap to some
extent.
The opponent’s potato chips and the contested goods have some common points
despite being dissimilar. Although their nature is not the same and they are neither
complementary nor in competition with each other, they are generally offered in the
same places as those where the goods are offered for sale andthey are directed at
the same public and have the same purpose. They are goods for human
consumption as the goods for which reputation has been proved are. Even if these
goods are not similar, they still belong to closely related areas. As seen above, the
signs are similar and the earlier trade mark is inherently distinctive. For these
reasons, the Opposition Division considers that the relevant consumer will establish a
link between the signs as far as these goods under comparison are concerned.
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 sign, 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).
d) 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.
Decision on Opposition No B 1 830 077 page: 10 of 13
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 that the use of the trade mark applied for will take unfair
advantage of the reputation of the ‘LAY´S’ trade mark. It is more than likely that a
consumer would attribute the goodwill acquired by the opponent through extensive
brand promotion including heavy advertising and wide spread promotion to the goods
offered under the contested mark.
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 mark
and be detrimental to the distinctive character and repute of the earlier trade mark.
As seen above, the earlier trade mark was found to have a reputation for potato
chips in Class 29.
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 claims that the contested mark would gain 'some sort of boost' as a
result of being linked, in the minds of the consumers, to the opponent's ‘LAY´S’
brand. It claims also that the reputation of the earlier marks could be used as a
vehicle for facilitating the sale of the goods and services under the holder´s mark.
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.)
Decision on Opposition No B 1 830 077 page: 11 of 13
In the present case there is a similarity between the signs, as they all contain the
distinctive element ‘LAY’ and, as seen above in section c), there is also proximity
between the contested goods. Therefore, in view of the reputation of the earlier mark,
the holder´s goods would receive an unfair gain in relation to its competitors in the
marketplace, as a direct result of the link made in the minds of consumers, between
them and the opponent’s reputed marks.
Considering all the above, the image of the ‘LAY’S’ brand would be transferred to the
contested mark and may lead to free-riding, that is to say, it would take unfair
advantage of the well-established reputation of the trade mark and the investments
undertaken by the opponent to achieve that reputation. Customers could feel
attracted by the contested mark due to the reputation achieved by the earlier mark
and this would facilitate the marketing of the goods and services offered under the
contested sign. In this way, the holder may unduly benefit from the reputation of the
earlier mark.
On the basis of the above, the Opposition Division concludes that the contested
trade mark is likely to take unfair advantage of the distinctive character or the repute
of the earlier trade mark.
Other types of injury
The opponent also argues that use of the contested trade mark would be detrimental
to the distinctive character and repute of the earlier trade mark.
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. The outcome would also not change
for those goods and services where no ‘link’ could be established since a ‘link’ is
necessary for the application of Article 8(5) EUTMR.
e) Conclusion
Considering all the above, the opposition is well founded under Article 8(5) EUTMR
as it is directed against all goods in Classes 30 and 32.
The result corresponds with the previous decision of the Office in opposition
B 2 663 352 of 04/05/2017 in the comparable case of “ ,
/ ”.
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Since the opposition is fully successful on the basis of the ground of Article 8(5)
EUTMR, there is no need to further examine the other ground of the opposition,
namely Article 8(1)(b) EUTMR.
Decision on Opposition No B 1 830 077 page: 13 of 13
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Since the holder 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Alexandra APOSTOLAKIS
Peter QUAY Julia SCHRADER
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 EUTMR, notice of appeal
must be filed in writing at the Office within two months of the date of notification of
this decision. It must be filed in the language of the proceedings in which the decision
subject to appeal was taken. Furthermore, a written statement of the grounds for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a
decision of the Opposition Division on request. According to Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.