OPPOSITION No B 2 692 823

Jaguar Land Rover Limited, Trade Marks Department W/1/6, Abbey Road, Whitley, Coventry, Warwickshire CV3 4LF, United Kingdom (opponent), represented by Reddie & Grose LLP, The White Chapel Building, 10 Whitechapel High Street, London E1 8QS, United Kingdom (professional representative)

a g a i n s t

Qingdao Kemei Trailer Manufacturing Co. Ltd., No. 8, Kongquehe 3 Raod Fuzhuang Industrial Base, Jimo Qingdao Shandong, People’s Republic of China (holder), represented by José Izquierdo Faces, Iparraguirre 42 – 3º izda, 48011 Bilbao (Vizcaya), Spain (professional representative).

On 22/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 692 823 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 259 197. The opposition is based on, inter alia, European Union trade mark registrations No 26 674 and No 189 795. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

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

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registrations No 26 674 and No 189 795.

1. The goods and services

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

European Union trade mark registration No 26 674

Class 12: Motor land vehicles and parts and fittings therefor.

Class 37: Maintenance, repair, restoration, inspection, care, cleaning, painting and polishing of vehicles and of their parts and fittings; consultancy services relating to maintenance, repair, restoration, inspection, care, cleaning, painting and polishing of vehicles and their parts and fittings and for the supply of parts for vehicles.

European Union trade mark registration No 189 795

Class 7: Alternators; air cleaners (air filters) for engines; compressors (machines); carburettors; fans and fan belts, all for engine cooling radiators (other than for land vehicles); clutches, exhausts, cooling radiators for engines, speed change gear, none for land vehicles; fuel feed apparatus for engines; fuel injection devices for internal combustion engines; electric generators; hydraulic lifting gear; oil cooling apparatus (for machines); pumps (other than petrol vending pumps, surgical pumps or air pumps being vehicle accessories); valves; power transmission take-off units for motor vehicle engines, for use as prime movers; parts for all the aforesaid goods; agricultural machines and agricultural implements; bushes and bearings, all being parts of vehicles, engines, motors or of machines; machine couplings; drive belts and drive chains, brakes, caps for cooling radiators, mechanical control apparatus for engines, brakes, clutches, accelerators or for transmission apparatus, hydraulic cylinders, hydraulic motors and hydraulic pipes, all for machines; electric motors, transmission gear and transmission shafts, none for land vehicles; constant velocity joints; hitches and implements, all for tractors, engine parts, connecting rods, and control cables; ignition apparatus and ignition distributors, all for internal combustion engines; filters (parts of engines, motors or of machines); tappets, ignition glow plugs and spark plugs, pistons, piston rings, rocker arms, manifolds and camshafts, all for engines; universal joints; turbo-superchargers for vehicle engines; earthmoving, earthworking, excavating, loading and tipping machines; pulleys for machines; parts and fittings for motor land vehicles and for engines; engines (not for land vehicles), but not including engines for aircraft; machines for the repair and servicing of vehicles.

Class 8: Lifting jacks; hand tools and instruments for use in the assembly, operation, repair, maintenance and servicing of vehicles; parts of the aforesaid goods; can openers; ice scrapers

Class 9: Radio apparatus, sound reproducing equipment, telecommunication equipment, electric accumulators, aerials, electric batteries and mountings, loud speakers, voltage regulators, all for private or commercial motor vehicles; electrical and scientific apparatus for use in the repair and servicing of vehicles; anti-theft warning devices; electric blowers; electric lighters; electric circuit breakers; commutators; electric condensers; electric connections; electric cables; electric fuses; electric fuse boxes; electric control apparatus and instruments for motor vehicles and engines; electrical sensors; fire extinguishing apparatus; gauges; instrument panels and clusters; lenses for lamps; odometers; printed electrical circuits; electric relays; electric switches; speedometers; tachometers; temperature sensors; voltmeters; electric wiring harnesses; ammeters; tape players; compact disc players; testing apparatus; computer software; parts and fittings for motor land vehicles; calculators; tape cassettes; computer games; recording media; storage boxes for recording media; car telephone installations; car vacuum cleaners; highway emergency warning equipment; cleaning equipment for motor vehicles; magnets; tape measures; thermometers; compasses; computer games.

Class 11: Apparatus and installations for the lighting of vehicles; lamp assemblies; anti-dazzle devices being lamp fittings for vehicles; bulbs for lamps and holders (being lamp fittings) therefor; lamp reflectors and reflectors for vehicles; flash lights; torches; apparatus and installations for air conditioning and for ventilating vehicles; apparatus and installations for the heating of vehicles.

Class 12: Vehicle axles; motor vehicle bodies; brake callipers, braking installations, draw bars, bumper bars, clutches, differential gears, drive gears, drive shafts, engines and motors, fans for engines, gear change selectors, transmissions, transmission shafts, radiators, radiator caps, exhausts, hydraulic cylinders and motors, couplings, carrying bearings and fan belts, all for land vehicles; chassis for motor vehicles; manual and power steering apparatus (other than automatic), personal safety restraints, seats, sliding roofs, steering columns, all for vehicles; vehicle wheel hubs; vehicle wheels; parts for all the aforesaid goods; deflectors, direction indicators, doors, hatches, upholstery, handles for doors, horns, mirrors (retrovisors), mud-flaps, roof-racks, shock absorbers, springs, stabiliser bars, starter motors, steering wheels, steering linkages, suspensions, torsion bars, tow bars, windows, window winding mechanisms, windscreen wipers, all for vehicles; arm rests for motor vehicles, balance weights for vehicle wheels; brake pads and brake linings, all for land vehicles; cabs for trucks and for tractors; caps for vehicle fuel tanks; mechanical controls for engines, brakes, clutches, accelerators and for transmissions, mountings for engines, all for land vehicles; tanks, engine noise shields, protective covers, radiator grilles, reservoirs for fluids, stowage boxes and stowage compartments, wheel carriers, all being parts of vehicles; tilt mechanisms for vehicle cabs; trim panels for vehicle bodies; motor land vehicles; parts and fittings for motor land vehicles or for engines.

Class 22: Non-metallic tow ropes.

Class 37: Maintenance, repair, restoration, inspection, care, cleaning, painting and polishing of motor land vehicles, civil engineering construction machines, agricultural machines, internal combustion engines or of parts and fittings for all these goods; diagnostic or Inspection services, all for motor cars or for parts and fittings therefor, or for internal combustion engines, consultancy services relating to maintenance, repair, restoration, inspection, care, cleaning, painting and polishing of vehicles and their parts and fittings and for the supply of parts for motor land vehicles.

The contested goods are the following:

Class 7: Elevators; rack and pinion jacks; lifting apparatus; truck lifts; waggon lifts; jacks [machines]; cranes [lifting and hoisting apparatus]; metalworking machines; starters for motors and engines; pulleys.

Class 12: Vehicles for locomotion by land, air, water or rail; electric vehicles; tailboard lifts [parts of land vehicles]; trailer hitches for vehicles; mopeds; trolleys; tires for vehicle wheels; boats; air pumps [vehicle accessories]; treads for vehicles [roller belts].

Some of the contested goods are identical to the goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.

2. Relevant public — degree of attention

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

In the present case, the goods assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention will vary from average (e.g. for air pumps [vehicle accessories]) to high (e.g. for vehicles for locomotion by land).

Taking into consideration the price of cars, consumers are likely to pay a higher degree of attention than for less expensive purchases. It is to be expected that these consumers will not buy a car, either new or second-hand, in the same way as they would buy articles purchased on a daily basis. The consumer will be an informed one, taking all relevant factors into consideration, for example, price, consumption, insurance costs, personal needs or even prestige (22/03/2011, T-486/07, CA, EU:T:2011:104, § 27-38; 21/03/2012, T-63/09, Swift GTi, EU:T:2012:137, § 39-42).

3. The signs

European Union trade mark registration No 26 674 European Union trade mark registration No 189 795
Earlier trade marks	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).

Earlier mark No 26 674 is a figurative mark consisting of a depiction of a leaping feline. Earlier mark No 189 795 is a figurative mark consisting of the same depiction of a leaping feline and the word ‘JAGUAR’ below it. The public will associate both signs with the concept of a leaping feline and will associate the latter with the concept of jaguar, namely ‘a large heavily built cat that has a yellowish-brown coat with black spots, found mainly in the dense forests of Central and South America’ (information extracted from Oxford Dictionaries on 31/05/2017 at https://en.oxforddictionaries.com/definition/jaguar). Neither of the earlier marks has any elements that could be considered clearly more distinctive or more dominant than other elements.

The contested sign is a figurative mark composed of the depiction of the upper part of a feline, with a round object, similar to a globe, underneath its paw, followed by three Oriental characters. Below those elements are the words ‘LUX LEOPARD’ in a fanciful script. The relevant public will associate the word ‘LEOPARD’ and the depiction of a feline with ‘a large solitary cat that has a fawn or brown coat with black spots, native to the forests of Africa and southern Asia’ (information extracted from Oxford Dictionaries on 31/05/2017 at https://en.oxforddictionaries.com/definition/leopard), as this word exists in various languages (e.g. German, Swedish and French) or its equivalent in other languages is very similar (e.g. ‘leopardo’ in Italian and Spanish). The word ‘Leopard’ and the depiction of a feline do not have any meaning in relation to the goods at issue; therefore, they have an average degree of distinctiveness. The verbal element ‘Lux’, in English, means ‘the SI unit of illuminance, equal to one lumen per square metre’ (information extracted from Oxford Dictionaries on 31/05/2017 at https://en.oxforddictionaries.com/definition/lux). This specialised word is not likely to be understood by a majority of the public, but it will be associated by the majority of the public with the concept of ‘luxe’. Bearing in mind that the relevant goods are mainly elevators, motors, machines, vehicles and their parts, this element is weak for some of these goods, namely vehicles, and it has an average degree of distinctiveness for the remaining goods. For the rest of the public, which will not attribute any meaning to this word, it has an average degree of distinctiveness. The oriental characters will be associated with the concept of Oriental calligraphy.

Visually, the earlier marks are a figurative sign and a figurative sign combined with a verbal element, whereas the contested sign is a figurative sign combined with verbal elements. The signs coincide in that all of them contain the depiction of a feline. However, the depictions differ, as the earlier signs show an entire leaping animal looking to the left, whereas the contested sign contains only the head and upper body of a feline looking to the right and is smaller than the former. Moreover, the latter differs in several respects from the former (a stylised paw and the use of black shading) and the contested sign contains two words. The signs differ in all of the other elements in the contested sign, as described above, and in the word ‘jaguar’ of earlier mark No 189 795.

Therefore, as the signs coincide in only a minor aspect, namely the generic depiction of a feline, it is concluded that the signs are not visually similar.

Aurally, purely figurative signs are not subject to a phonetic assessment. As earlier mark No 26 674 is purely figurative, it is not possible to compare it aurally with the contested sign.

Earlier mark No 189 795 and the contested sign differ aurally in the sounds of the letters of their verbal elements, namely ‘Jaguar’ in the earlier mark and ‘Lux Leopard’ in the contested sign. They also differ in that the contested sign is composed of two words. They coincide only in their fifth and sixth letters, ‘ar’. Therefore, the signs are aurally dissimilar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The figurative depiction of a feline in both of the earlier signs and the word ‘Jaguar’ in earlier mark No 189 795 will be associated with the meaning explained above. The contested sign will be associated with various concepts: a leopard, a feline, Oriental calligraphy, the world and ‘luxe’. Considering all of these concepts in the contested sign, the signs have in common only the concept of a feline. As some of their elements of the signs will be associated with a similar meaning, the signs are conceptually similar to a low degree.

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

4. Distinctiveness of the earlier marks

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 trade marks have a reputation and enjoy a high degree of distinctiveness as result of their long-standing and intensive use among the relevant public in the European Union in connection with some of the goods and services for which they are registered: earlier European Union trade mark registration No 26 674 for goods in Classes 12 and 37 and earlier European Union trade mark registration No 189 795 for goods and services in Classes 7, 12 and 37.

This claim must be properly considered given that the distinctiveness of the earlier trade marks must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier marks, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted, inter alia, the following evidence:

• Appendix 2: witness statement of Amanda Beaton, who has been Global IP Counsel for Jaguar Land Rover Limited since 2012. It refers to the reputation of the Jaguar brand, including the leaping jaguar (i.e. the leaper), and includes the following information:

• Table showing the EU annual turnover figures relating to Jaguar goods and services in the period 2009-20014, amounting to GBP 3 billion.
• Table showing the number of Jaguar vehicles sold in the EU in the period 2009-20015, amounting to 800 000 vehicles.
• Table showing the EU expenditure on marketing and advertising of Jaguar goods and services, including use of the leaper, in the period 2010-2014, amounting to more than GBP 50 million.
• Table showing the number of visitors to or users of Jaguar’s website in the EU between April 2014 and March 2015, amounting to approximately 9 million.
• Awards and recognitions relating to vehicles advertised and sold in the EU under the Jaguar brand, including use of the leaper, in the period 1994-2014 (documents attached in exhibit AJB1), and a list of the most recent awards, which are reported to be more than 80.

• Appendices 4 to 6: selection of press articles discussing the Jaguar brand including:

• Article from the online magazine Autocar dated 28/05/2014 regarding the JD Power satisfaction survey on cars, stating that Jaguar and Lexus were the most popular brands among vehicle manufacturers in 2014.
• Article from the Daily Mail Online dated 28/08/2014 giving a list of the best cars from a survey among motorists, in which the E-type Jaguar appears in first place.

• Appendix 15: 26 invoices bearing the trade mark ‘Jaguar’ and the depiction of the leaper, addressed to customers in France, the United Kingdom, Ireland, Spain, Sweden, Italy and Greece, dated between 2009 and 2015. The goods in the invoices are certain models of cars and some of the invoices mention Jaguar. They do not show prices.

• Appendix 16: printouts from Jaguar’s official website showing pictures of some parts and accessories of Jaguar cars, in which the trade mark ‘Jaguar’ and the depiction of the leaper appear (copies printed on 30/11/2015).

• Appendix 22: brochures relating to Jaguar vehicles, in English, German and Italian, in which the trade mark ‘Jaguar’ and the depiction of the leaper appear, dated 2014.

• Appendix 23: copies of brochures of Jaguar merchandise, showing various goods with the trade mark ‘Jaguar’ and the depiction of the leaper, including a list of prices, dated 2010.

• Appendix 24: copies of leaflets showing pictures of a selection of advertising and promotional materials relating to the Jaguar brand, including the depiction of the leaper.

• Appendix 25: printouts from the website IMCDb.org (an internet movie cars database) containing information on the appearances of Jaguar vehicles in films and television programmes (printed on 08/04/2015).

• Appendix 30: printouts from the website https://global.jaguar.com containing information on the participation of Jaguar vehicles in motorsport events between 1951 and 2004.

• Appendix 31: printout from Jaguar’s Facebook page, on which an article was posted showing Jaguar as an official partner of the Coronation Festival of Queen Elizabeth II, dated 10/06/2013.

• Appendix 33: printout from the website www.mediaweek.co.uk regarding Jaguar’s sponsorship of major sporting events in the United Kingdom.

• Appendix 34: printouts from the websites www.skysports.com and http://uk.businessinsider.com regarding Jaguar’s sponsorship of team Sky in cycling events (including several events in France and the United Kingdom).

Having examined the material listed above, the Opposition Division concludes that the earlier trade marks have acquired reputation through their use on the market in relation to some of the goods at issue, namely goods in Class 12 (motor land vehicles and parts and fittings therefor) for earlier European Union trade mark registration No 26 674 and some of the goods in Class 12 (motor land vehicles; parts and fittings for motor land vehicles) for earlier European Union trade mark registration No 189 795.

The evidence clearly shows long-standing and intensive use of the ‘Jaguar’ figurative signs in the European Union relating to cars and their parts. 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 documents filed include brand survey results stating that the Jaguar mark (including the leaping jaguar) is a reputed trade mark in the car sector; turnover and advertising investments, which demonstrate the considerable exposure over a long period of the marks on the market; and press articles, evidence of a large number of visits to Jaguar websites, sponsorships of well-known sporting events, awards and other documents, which demonstrate that the marks enjoy a high degree of recognition among the relevant public.

However, the evidence does not demonstrate a high degree of recognition among the relevant public for the remaining goods and services for which reputation was claimed.

5. Global assessment, other arguments and conclusion

The goods are assumed to be identical.

The signs are visually dissimilar and conceptually similar to a low degree, as they all contain the depiction of a feline. There are significant visual differences between the depictions, in their size and orientation, and the inclusion of two words, three Oriental signs and an additional figurative element in the contested sign also lead to visually dissimilarity between the signs. Furthermore, the aural comparison cannot be made with one of the earlier marks because it is purely figurative, while the other earlier mark is aurally dissimilar to the contested sign.

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 marks 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 (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

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

In the present case, the considerable visual differences between the signs caused by the different depictions of the feline and the aural dissimilarity due to there being two words in the contested sign are particularly relevant when assessing the likelihood of confusion between them. The concrete visual differences between them are clearly perceptible and are sufficient to override the conceptual similarity that derives solely from the generic notion and vision of a feline. The Opposition Division is of the opinion that, because of the notable visual differences in the feline depictions and, in the case of earlier mark No 189 795, the inclusion of the word ‘Jaguar’, consumers will have no difficulty in distinguishing between the marks, regardless of the identity between the goods and the enhanced degree of distinctiveness of the earlier marks.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings. In the decision of 30/08/2010, B 1 287 178, the signs were both figurative signs consisting of a very similar depiction of a feline, without any other elements; therefore, the signs in the case referred to are not comparable to those in the present case.

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above, even assuming that the goods are identical and even though the earlier marks have a reputation, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade marks:

• Austrian trade mark registration No 111 323 for the figurative mark  for goods in Class 7.
• Czech trade mark registration No 168 143 for the figurative mark  for goods in Class 12.

• French trade mark registration No 1 713 956 for the figurative mark  for goods in Classes 7 and 12.

• Benelux trade mark registration No 411 497 for the figurative mark  for goods in Class 7.

• German trade mark registration No 1 091 851 for the figurative mark  for goods in Class 12.

• German trade mark registration No 645 962 for the figurative mark  for goods in Class 12.

• Italian trade mark registration No 1 146 662 for the figurative mark  for goods in Classes 7 and 12.

• United Kingdom trade mark registration No 1 238 643 for the figurative mark  for goods in Class 7.

• United Kingdom trade mark registration No 1 238 644 for the figurative mark  for goods in Class 12.

Since these marks are identical to European Union trade mark No 26 674, which has already been compared, and the goods were assumed to be identical, the outcome cannot be different with respect to the goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

The Opposition Division will now examine the opposition 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 holder establishes due cause for the use of the contested trade mark.

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

1. The signs

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

2. Reputation of the earlier trade marks

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

For the rest of the earlier trade marks, for reasons of procedural economy, the Opposition Division will assume that they also enjoy a high degree of reputation.

3. The ‘link’ between the signs

As seen above, the earlier marks are 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.

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, the signs are similar to some extent, but only conceptually and to a low degree, as the contested sign contains the depiction of part of a feline. The goods are identical (and the earlier marks enjoy a high degree of reputation). However, as shown above, there is no likelihood of confusion on the part of the public.

The Opposition Division considers that, in view of the significant differences between the signs, the low degree of conceptual similarity between the contested trade mark and the earlier trade marks is unlikely to bring the earlier trade marks to the mind of the average consumer in relation to the contested mark. Even though the earlier marks have a reputation, the differences between the signs, in particular due to the concept created by the combination of the elements ‘Lux Leopard’, the different depictions of the feline and the other figurative elements, are significant enough for the public not to make any connection between the marks in conflict.

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

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 opponent is the losing party, it must bear the costs incurred by the holder in the course of these proceedings.

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

The Opposition Division

Sandra KASPERIŪNAITĖ

Patricia LÓPEZ FERNÁNDEZ DE CORRES

Dorothée SCHLIEPHAKE

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.