OPPOSITION No B 2 165 226

Diknah S.L., Calle Mercaders, Numeros 9-11, Poligono Industrial Riera de Caldes, 08184 Palau Solita i Plegamans – Barcelona, Spain (opponent), represented by Cabinet Degret, 24, place du Général Catroux, 75017 Paris, France (professional representative)

a g a i n s t

Mango Bicycles Limited, Braydon Farm Cottage Leigh, Swindon, Wiltshire SN6 6RQ, United Kingdom (applicant), represented by Thrings LLP, The Paragon Counterslip, Bristol  BS1 6BX, United Kingdom (professional representative).

On 28/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 165 226 is upheld for all the contested goods.

2.        European Union trade mark application No 11 320 231 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 11 320 231. The opposition is based on Spanish trade mark registration No 1 164 248. The opponent invoked Article 8(1)(b) and 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 shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

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

1. The signs

MANGO
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).

The earlier mark is a word mark ‘MANGO’ written in uppercase typeface. In the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters, or in a combination thereof.

The contested sign is a figurative mark composed of the word ‘mango’ in lowercase typeface. Above the final letter ‘GO’ appears a silhouette of a cyclist in a way that it looks as if the letters ‘GO’ were a stylised bicycle.

The word ‘mango’ included in both signs will be associated with an edible tropical fruit. This word has no meaning in relation to the relevant goods at hand and is therefore considered to be distinctive in relation to the relevant goods at hand.

The earlier mark has no elements that could be considered clearly more distinctive than other elements. The figurative element of the contested sign will be associated with a cyclist. Bearing in mind that the relevant goods are different items of clothing, footwear and headgear’, this element is considered to be non-distinctive for these goods as it may indicate that the goods are aimed at cyclists.

The marks have no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the word ‘mango’. However, they differ in a figurative element of the contested mark, namely a depiction of a cyclist in a movement which is however considered to be non-distinctive in relation to the relevant goods at hand.

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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, the signs are visually highly similar.

Aurally, the signs coincide in the word ‘mango’. The figurative element of the contested mark will not be pronounced as purely figurative signs are not subject to a phonetic assessment.

Therefore, the marks are aurally identical.

Conceptually, the word ‘mango’ included in both signs will be associated with an edible tropical fruit and the figurative element of the contested will be perceived as a depiction of a cyclist, which however is considered to be non-distinctive in relation to the relevant goods at hand.

Therefore, to the extent that the signs will be associated with the concept of ‘mango’, the signs are conceptually similar to a high degree.

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

2. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in Spain.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 05/11/2012. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation Spain prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely

Class 25: Clothing for women, men and children.

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 19/11/2015, the opponent submitted the following evidence:

• Annexes 2.1.- 2.13:  extracts from the website www.abici-italia.it, www.ghost-bike.de, www.raleigh.co.uk, www.alanbike.it, www.bianchi.com, www.giant-bicycles.com, www.scott-sport.com, www.lookcycle.com, www.k2bike.com, etc. According to the opponent, the evidence shows that it is common on the market that the companies that produce bikes such as for example Ghost Bike, Alanbike, Bianchi, Giant Bike, etc. are also producing and selling clothing.
• Annex 3: a document of unknown source, showing a table with a summary of advertising expenses for the brand ‘MANGO’ in EU broken down by countries. The evidence relate to the period from the year 2000 until 2008.
• Annex 4: a print-out from the opponent’s website showing the list of top models that promoted the brand ‘mango’ and ‘MNG’ in the years 1992 until 2005.
• Annex 5:  a copy of the first page of several ‘MANGO’ catalogues from the years 1991 to 1995. The annex also includes several print-outs from the opponent’s website showing the models that advertised ‘MANGO’ products in the years from 1992 until 1995.
• Annex 6: a copy of a document containing pictures of ‘MANGO’ advertisement displays. According to the document the advertising campaign for ‘MANGO’ took place in Barcelona and was done by the company MPG ‘media contact’ in May 2012.
• Annex 7: Mango Group Sustainability report dated 2007, containing information for the Mango group’s turnover for the years 2002 to 2007, number of ‘mango’ stores (1094 stores on 31/12/2007), number of employees, business percentages per country, sales for geographic region, etc. The document also contains information about the countries of export (according to the document ‘MANGO’ products were mostly exported to France, Germany and the United Kingdom).
• Annex 8: Mango group Auditor’s Report for the year 2007.
• Annex 9: List of ‘mango’ stores worldwide. According to the document in 2008 Mango Group had 281 stores in Spain, 58 stores in Germany, 82 stores in France, 25 stores in the UK, etc.
• Annex 10 and 11: Mango group Auditor’s Report for the years 2008 and 2009.
• Annex 12: Mango Group Sustainability report for 2010. The document contains information about the company’s turnover from the year 2006 until 2010, number of stores, number of employees, etc.
• Annex 13: Mango group Auditor’s Report for the year 2010.
• Annex 14 and 15: Mango Group Sustainability report for 2011 and 2012. The document contains information about the number of stores, number of employees, number of items sold, information about the turnover, etc.
• Annex 16-22: extracts from different Spanish magazines (for example: Woman, Elle, Chic, Marie Claire, Telva, InStyle, Glamour, Cosmopolitan, MM Moda, Men’s Health, Ragazza, MM Moda, Unica Mujer, Clara, Playboy, D’Elite, Lecturas, OK, Vanity Fair, Cinemania, AR La Revista de Ana Rosa, Belezza Mia, Lux, You, Bazar, Donna, Cuore Stilo, Hola, Diez Minutos, In Touch, etc.) containing advertisement of different ‘mango’ products (for example tops, trousers, bags, different jackets, accessories such as jewellery and sunglasses, shoes, trench coats. coats, dresses, underwear, skirts, etc.). The extracts concern the time period February 2006, February 2007, February 2008, February 2009, February 2010, February 2011, February 2012. Some of the magazines also contain articles in Spanish referring to the trade mark ‘MANGO’. However, these articles are not translated in the language of proceedings and cannot be taken into account (for example article published in 13FDNEWS in 2005 or LAMOUR of February 2007).
• Annex 23: An extract from a magazine Ideas & Negocios (January 2011) in Spanish with a translation into English. The article refers to the awards of Franquicias Hoy. According to the article, ‘MANGO’ received an award for the best exported business concept.
• Annex 24: a document ‘Leading brands of Spain’ issued by Brands of Spain Association in 2003. An extract contains reference to the brand ‘MANGO’ which markets women’s clothes.
• Annex 25: a document ‘Brands that have the power to change the retail word – Top performing European Retail Brands 2008’ issued by the Interbrand. According to the mentioned document ‘MANGO’ was rated as number 19 in 2008.
• Annex 26: a document ‘Best Retail Brands 2009’ in the USA and ‘Europe’s 25 Most Valuable Retail Brands’. According to the mentioned document ‘MANGO’ was rated number 19 in 2009.
• Annex 27: an extract from the website www.marques.org of 19/02/2009. The extract refers to the most valuable Spanish brands by consulting firm Brand Finance Iberia. According to the list ‘MANGO’ was ranked 38 in 2009.
• Annex 28: a document ‘Best retail Brands 2011’. The documents among others include a section about most valuable Spanish brands in 2011. According to the document fashion brands such as ‘…, Mango….’ are growing and leading the sector, due to the international expansion, excellent local adaptation, and the constant update of their collections based on runway fashion and urban trends. ‘MANGO’ brand is listed as 3rd with 1,071 $m of revenue with over 1,700 stores in 102 countries.
• Annex 29: a document ‘Best retail Brands 2012’. The documents among others include a section about most valuable Spanish brands in 2012. According to the document ‘MANGO’ brand is listed as 3rd with 1,199 $m of revenue.
• Annex 30: a document ‘Mejores Marcas Españolas 2013 (‘Best retail Brands 2013’). The documents among others include a section about most valuable Spanish brands in 2012. According to the document ‘MANGO’ brand is listed on 8th position.
• Annex 31: a document ‘Best retail Brands 2014’ where ‘MANGO’ brand is mentioned among top fashion brands in the world. The documents among others include a section about most valuable Spanish brands in 2014. According to the document ‘MANGO’ brand is ranked 17 with 1,277 $m of revenue.
• Annex 32: an extract from the website www.brandirectory.com (Brand Finance) containing information about the 100 most valuable Spanish brands of 2014. According to the document, the brand ‘Mango’ was ranked in 42nd position in 2013 and 43rd in 2014.
• Annex 33: an extract from a website www.alexa.com, showing that the Mango Group website is ranked number 11 worldwide in the category Shopping/Clothing. The annex also includes an extract from the website www.alexa.com which shows how popular the website mango.com is.
• Annex 34: decisions of EUIPO (Decision No 463/2003 and a Decision of First Board of Appeal in Case R 308/2003-1).
• Annex 35: Mango product catalogues for the years 2000-2006 (for Austria, Belgium, Bulgaria, Denmark, Estonia, Italy, Latvia, Portugal, Romania, Spain, United Kingdom).
• Annex 36: Mango catalogues for Sport Accessories (Fall 2014).
• Annex 37: extracts from the opponent’s website showing news related to the brand ‘MANGO’. Additionally, the annex also contains pictures of ‘MANGO’ models appearing in different magazines and articles mentioning fashion models posing for the advertising campaign of ‘MANGO’.
• Annex 38: extracts from different websites (for example www.behance.net, www.stylenstyle.com, www.gotceleb.com, etc. showing some references to the FERO Foundation regarding an exclusive T-shirt designed by Penelope and Monica Cruz available for purchase in mangoshop.com.  
• Annex 39: an extract from the website www.gala.de showing a Press release where ‘MANGO’ woman’s bag is depicted. According to the press release ‘MANGO’ advertising star Scarlett Johansson designed a bag and donated it to the victims of Haiti earthquake.
• Annex 40: extracts from several websites mentioning Mango fashion awards for the year 2010 until 2013. The annex also contains other articles from different magazines containing references to ‘MANGO’ brand such as reference to ‘MANGO’ scholarships of EUR 300 000 for young designers, ‘MANGO’ fashion awards for 2010, 2011,
• Annex 41: an extract from online websites (for example www.cosmopolitan.com, www.lemondropsandhoneybees.com, www.sportswearnet.com, www.europress.es, www.femme-sentimentale.blogspot.fr containing press releases concerning ‘MANGO’ brand. According to the articles, ‘MANGO’ issued its first sports collection in 2013 encompassing pieces of clothing for fitness, running and yoga.
• Annex 42: an extract from www.google.co.uk showing the hits for search ‘mango fashion waterproof jacket, ‘mango clothing biking’, ‘mango clothes for cycling’, ‘mango bags for cycling’.

On the basis of the above the Opposition Division concludes that the earlier trade mark has a reputation in Spain.

The abovementioned evidence indicates that the earlier trade mark ‘MANGO’ has been used for a substantial period of time (since the 1990s) and that the opponent has been very active in creating and enhancing its position on the marketplace in relation to clothing.

The evidence shows that the relevant public (namely the public at large) was exposed to the trade mark ‘MANGO’ extensively and there is enough evidence to allow for establishing that the ‘MANGO’ trade mark has acquired a strong position in the perception of the consumers as a brand for clothing. This is corroborated by the evidence in Annexes 25-32 in which ‘MANGO’ was included among the most valuable Spanish trade marks for several years in a row and was also recognised as one of the top fashion brands in the world. Also, the press releases and publications referring to the earlier mark give some indirect information of the opponent’s investments and its promotional, communication and marketing strategies. The number of ‘MANGO’ products appearing in various Spanish magazines and the participation of the opponent’s mark in several events (Annex 38 and 39) show that the opponent has undertaken steps to build-up a brand image and enhance trade mark awareness among the public.

On an overall assessment of the evidence, and as it is clear that the opponent’s presence on the marketplace has been highly visible, the Opposition Division finds that the evidence indicates that the earlier trade mark enjoys recognition among a substantial part of the relevant public, which leads to the conclusion that the earlier trade mark enjoys reputation for goods in Class 25.

Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR such as, for example, the degree of similarity between the signs, the inherent characteristics of the earlier trade mark, the type of goods and services in question, the relevant consumers, etc.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are visually and conceptually highly similar and aurally identical. 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.

As indicated in section a), the earlier mark has been almost identically incorporated in the contested sign. The earlier mark has an average distinctive character per se in relation to the relevant goods and, as concluded in the previous section, has proven a long-standing and strong reputation.

The opponent has proven reputation for Clothing for women, men and children in Class 25.

The contested application seeks registration for the following goods:

Class 12: Air pumps for bicycles for the inflation of tyres; air pumps for inflating bicycle tyres; bags for bicycles; baskets adapted for bicycles; bells for bicycles; bicycle brakes; bicycle carriers; bicycle chains; bicycle frames; bicycle handle bars; Bicycle handlebar grips; Bicycle horns; Bicycle hubs; Bicycle kickstands; Bicycle pedals; Bicycle pumps; Bicycle racks [carriers]; Bicycle saddle covers; Bicycle saddles; Bicycle seat posts; Bicycle seats; Bicycle spokes; Bicycle stabilisers; Bicycle stands; Bicycle structural parts; Bicycle tires [tyres]; Bicycle training wheels; Bicycle tyres; Bicycle water bottle cages; Bicycle wheels; Bicycles; Bottle cages for bicycles; Brakes for bicycles; Carrying racks for bicycles; Chain guards for bicycles; Direction indicators for bicycles; Direction signals for bicycles; Dress guards for bicycles; Fittings for bicycles for carrying luggage; Pumps for bicycles, cycles; Racing bicycles.

First, the signs bear strong similarities. The earlier mark consisting of the word ‘MANGO’, is inherently distinctive in connection with the goods. The contested sign includes the identical word, with an addition of a depiction of a cyclist, which is considered to be non-distinctive in relation to the goods at hand. In view of the strong reputation of the earlier mark, there can be very little doubt that the contested mark will bring to mind the earlier highly reputed mark in the minds of the relevant consumers. It is reasonable to assume that consumers who know the earlier reputed ‘MANGO’ mark and who see on contested goods would immediately recall the earlier mark. The coincidence in the concept of a tropical fruit conveyed by both marks cannot be underestimated when ruling that the relevant consumer will indeed link the signs.

Regarding the contested goods in Class 12 are bicycles and various accessories and parts of bicycles. The goods show certain connections with the opponent’s clothing in Class 25 which is defined as a broad category and may also include clothing for cycling.^[1] Despite their different natures (the goods require different technologies and very different methods of manufacturing, purposes (the contested goods are bicycles and accessories essentially meant to allow people moving from a place to another, whilst the earlier goods are meant to cover and adorn the human body) and method of use, there is a certain complementarity between them. Clothing for biking is for example designed to improve comfort and efficiency when cycling, for example by reducing wind resistance and increasing aerodynamic efficiency or compressing the cyclist’s legs). Furthermore, the goods can originate from the same undertakings and be distributed through the same trade channels. In addition, they target the same consumers. A person purchasing a bicycle and bicycle accessories or parts will almost certainly have the opportunity of purchasing bike clothing in the same outlet. In conclusion, the opponent’s clothing is deemed to have a degree of similarity. This has also been confirmed in case R 255/2013-1 of 08/01/2014, §19-30).

In addition, as the opponent correctly pointed out, it is a well-known fact that bicycle producers also sell special clothing. The evidence of reputation filed above mentions on numerous occasions that the applicant produces clothing (Annex 36 and 41). Although, it is generally the case that textile undertakings that manufacture clothing are not involved in the manufacture of bicycles, it cannot be said that the contested goods are so far apart from the earlier reputed goods as to prevent a link being made. Further, as it is well established that bicycle companies also produce sports clothing, by analogy this link also cannot be excluded the other way round. In deciding this, the fact that the marks are highly similar visually, aurally identical, that they both bring to mind the idea of a tropical fruit and that the earlier mark has a strong reputation are key factors to be considered and together lead the Opposition Division to conclude that a link will be made.

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).

4. Risk of injury

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

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

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

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

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/06/2012, 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 claim, among other things, the following:

• The earlier mark has a very high degree of reputation. The use of the contested mark which is almost identical to the earlier mark will allow the applicant to unduly exploit/free ride on the reputation of the earlier mark. Not only will the public erroneously associate the challenged goods with the opponent and thus transfer the opponent’s reputation and image to the challenged goods, but this ‘high-jacking’ of the fame of the prior mark will also allow the applicant to insert itself and its goods into the market much more easily and without the huge costs that the opponent had to bear in order to establish its mark. The power of attraction therefore unduly benefits to the challenged EUTM by drawing consumers to its goods.

• The use of the challenged EUTM, which is virtually identical to the prior trade mark is already allowing the applicant to unfairly draw clients away from the opponent to its own goods. This is not only unduly benefiting to the applicant to promote its goods, this is also causing consumers to turn their backs on the opponent and its mark, causing the latter actual detriment/loss of revenue.

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.

Unfair advantage (free-riding)

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

The opponent claims specifically that through years of extensive use the MANGO brand acquired a very strong reputation in the area of fashionable clothing, including goods for sports. The contested mark covers bicycles and bicycles accessories and parts. Therefore, it is highly likely that the applicant would indeed intend to profit from the efforts made by the opponent in building up goodwill in its ‘MANGO’ brand by adopting a mark that consumers would immediately link to the opponent. The contested mark will unduly exploit or free-ride of the reputation of the earlier mark and will allow the applicant to insert itself and its goods into the market much more easily and without the huge costs in order to establish its mark.

Taking into account the high similarity between the marks, the high degree of reputation of the earlier mark and the link between the relevant goods as examined in detail above, it is concluded that the contested mark would indeed benefit from the value of the earlier mark.

It has to be noted that the more similar the marks are, the more likely it is that the later mark will bring the earlier mark with a reputation to the mind of the relevant public (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 26; 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 44). Consequently, in the present case, it is highly probable that consumers will make a direct association between the conflicting signs, since the earlier mark as a whole is almost identically incorporated in the contested sign and the earlier mark has a very strong reputation.

In the Opposition Division’s view, there is a probability of free-riding in the circumstances of this case. The opponent has put forward a coherent line of argument showing how unfair advantage would occur, and that it is indeed likely in the ordinary course of events. The long-established use and recognition of the earlier mark makes it probable that consumers’ economical behaviour would be swayed in favour of the applicant’s goods solely because they are commercialised under the contested sign.

On the basis of the above, the Opposition Division concludes that the contested trade mark will 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 mark. It follows that there is no need to examine whether other types also apply.

Conclusion

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

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

COSTS

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

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

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

The Opposition Division

Lars HELBERT

Janja FELC

Judit NÉMETH

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.

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