OPPOSITION No B 2 512 914

Deutsche Post AG, Charles-de-Gaulle-Str. 20, 53113 Bonn, Germany (opponent), represented by Jonas Rechtsanwaltsgesellschaft mbH, Hohenstaufenring 62, 50674 Köln, Germany (professional representative)

a g a i n s t

Neopost SA, 113 rue Jean Marin Naudin, 92220 Bagneux, France (holder), represented by Cabinet Beau de Lomenie, 158, rue de L’Université, 75340 Paris Cédex 07, France (professional representative).

On 15/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 512 914 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the services of international registration No 1 217 350 designating the European Union. The opposition is based on German trade mark registration No 30 012 966. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

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), if the applicant so requests, the opponent shall 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 shall 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, 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). 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 mark on which the opposition is based, namely German national trade mark No 30 012 966.

The request is, however, inadmissible. According to Article 26(5) of the German law on the protection of marks and other signs, the relevant date for calculating the five-year grace period in cases where an opposition has been lodged against the registration of a mark is the date when the opposition proceedings are closed and not the date of the registration of the mark.

According to the registration certificate submitted, an opposition was lodged against the registration of the mark and the proceedings were concluded on 17/10/2012. Therefore, the grace period had not expired at the date of publication of the mark applied for.

The request for proof of use in relation to German national trade mark No 30 012 966 is inadmissible.

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.

1. The services

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

Class 35:        Collecting, forwarding and delivery of direct and indirect mail advertising.

Class 39:        Postal, freight, express, parcel and courier services; transport and delivery of items, letters, parcels, packets; collecting, forwarding and delivery of consignments with written communications and other messages, in particular letters, printed matter, trade samples, circulars, books, Braille literature, newspapers, periodicals, brochures.

The contested services are the following:

Class 35:        Computer-assisted mail franking services, mail franking services via the Internet, services for the selection and processing of private and company addresses by means of computer networks, assistance and consulting services in the field of mail management, assistance and consulting services for business management in the field of logistics, transport, and transport of merchandise, parcels and mail; document reproduction services; drawing up statistics; assistance to companies in optimizing parcel and mail dispatch rates and in the management of their spending, these services can be provided online; computerized file management; compilation of information into computer databases, these services can be provided online; assistance to companies in managing their dispatch services for letters or parcels, these services can be provided online; providing personnel for others for performing mail processing operations.

Class 36:        Financial services, financial account management services for remote franking of letters and parcels; postal credit recharging services; services for processing transfers and cost deductions of franking letters and parcels; leasing, rental with promise of sale of all equipment, machines, apparatus and devices in connection with the processing, transport and delivery of mail, of all plants, all workshops, offices and premises; portfolio management of shares and securities and operations relating thereto, management of all buildings.

Class 38:        Telecommunication services, telecommunication services via computer networks, services providing access to computer telecommunication networks, communication services via computers grouped on a global communication network (the Internet) or to a private or restricted access network (intranet type), services providing means of access to a server for services in the fields of processing, logistics and transport of merchandise, parcels and mail.

Class 39:        Rental without commitment to sell of all equipment.

Class 42:        Design and development of computer software, software maintenance, research and expertise services in the field of mail and parcel processing techniques, consulting and assistance services for the installation, maintenance and updating of systems (software) for the electronic processing of data for tracking, monitoring and locating parcels, mail and pallets during their processing, transport and delivery, consulting services for the installation of systems (software) for the electronic processing of data for tracking and locating packages, mail and pallets during their transport and delivery; services for the conversion of computer programs and data; services for the conversion of data and documents from physical to electronic media.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The term ‘in particular’, used in the opponent’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested services in Class 35

Advertising services, to which the opponent’s services in Class 35 belong, consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their clients needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

Business management services, to which some of the contested services belong, are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

When comparing business management with advertising, advertising is an essential tool in business management because it makes the business itself known in the market. As stated above, the purpose of advertising services is to ‘reinforce a client’s position in the market’ and the purpose of business management services is to help a business ‘acquire, develop and expand market share’. There is no clear-cut difference between the two. A professional who offers advice on how to run a business efficiently may reasonably include advertising strategies in their advice because there is little doubt that advertising plays an essential role in business management. Furthermore, business consultants may offer advertising (and marketing) consultancy as part of their services and the relevant public may thus believe that these two services have the same professional origin. Therefore, they are similar to a low degree.

The contested assistance and consulting services in the field of mail management; assistance and consulting services for business management in the field of logistics, transport, and transport of merchandise, parcels and mail are all services aimed at supporting or helping other businesses (by providing tools and expertise) to do or improve their mail management business. Therefore, in accordance with the above, they are considered similar to a low degree to the opponent’s collecting, forwarding and delivery of direct and indirect mail advertising. They may have the same purposes, providers and relevant public.

The contested computer-assisted mail franking services, mail franking services via the Internet, services for the selection and processing of private and company addresses by means of computer networks; assistance to companies in optimizing parcel and mail dispatch rates and in the management of their spending, these services can be provided online; assistance to companies in managing their dispatch services for letters or parcels, these services can be provided online; providing personnel for others for performing mail processing operations are office function services for the day-to-day running of an office, namely handling the mail/address books of an office and dispatch and personnel services. These services are usually provided by companies specialised in the provision of clerical (office function) services, which are different from postal services, and not by courier companies, which provide the opponent’s services. In addition, their purposes are different: the contested services in Class 35 are related to assisting someone’s business, while the opponent’s services are specifically services for processing mail. Therefore, the contested services are considered dissimilar to all of the opponent’s services, as they have different natures, purposes and methods of use. Furthermore, the contested services are neither complementary to nor in competition with the opponent’s services and, although they may target the same public, this is not a strong argument for finding a similarity between them.

The contested document reproduction services; drawing up statistics; computerized file management; compilation of information into computer databases, these services can be provided online are also considered dissimilar to all of the opponent’s services. They are provided by different companies and have different specific purposes and methods of use. Furthermore, they do not have the same distribution channels or sales outlets, are not in competition and do not target the same end users.

Contested services in Class 36

The contested financial services, financial account management services for remote franking of letters and parcels; postal credit recharging services; services for processing transfers and cost deductions of franking letters and parcels; leasing, rental with promise of sale of all equipment, machines, apparatus and devices in connection with the processing, transport and delivery of mail, of all plants, all workshops, offices and premises; portfolio management of shares and securities and operations relating thereto, management of all buildings are financial (managing) and leasing services. These services, even though they concern the franking of letters and parcels and the leasing and rental of mail devices and premises, are considered dissimilar to the opponent’s services, as they are provided by different companies and have completely different specific purposes and methods of use. Furthermore, they do not have the same distribution channels or sales outlets and they are not in competition with, or complementary to, the opponent’s services. The mere fact that they may target the same end users is not sufficient for finding a similarity between them.

Contested services in Class 38

The contested telecommunication services, telecommunication services via computer networks, services providing access to computer telecommunication networks, communication services via computers grouped on a global communication network (the Internet) or to a private or restricted access network (intranet type), services providing means of access to a server for services in the fields of processing, logistics and transport of merchandise, parcels and mail are mainly services for providing the means to allow one person to talk to another or for accessing such services. These services are not typically provided by the same companies as the opponent’s services. They do not have the same natures, purposes or methods of use, they are not in competition and they do not have the same providers or end users. Therefore, they are considered dissimilar.

Contested services in Class 39

The contested rental without commitment to sell of all equipment are rental services, which include, for example, car rental services and are therefore considered similar to a low degree to the opponent’s transport and delivery of items in Class 39. They may have the same purposes (namely the provision of certain items or the provision of access to certain items), providers and relevant public.

Contested services in Class 42

The contested design and development of computer software, software maintenance, research and expertise services in the field of mail and parcel processing techniques, consulting and assistance services for the installation, maintenance and updating of systems (software) for the electronic processing of data for tracking, monitoring and locating parcels, mail and pallets during their processing, transport and delivery, consulting services for the installation of systems (software) for the electronic processing of data for tracking and locating packages, mail and pallets during their transport and delivery; services for the conversion of computer programs and data; services for the conversion of data and documents from physical to electronic media are software design and consultancy services for, inter alia, mail deliveries. Even though these services are intended for improving mail and package postal services, they are not typically provided by postal service providers. They do not have the same natures, purposes or methods of use, and they do not have the same end users. Therefore, these services are considered dissimilar to all the opponent’s services.

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 services found to be similar to a low degree are directed at the public at large and some of the services at issue are specialised services directed at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication/specialised nature, or terms and conditions of the purchased services.

3. The signs

POST	NEOPOST
Earlier trade mark	Contested sign

The relevant territory is Germany.

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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

Both marks are word marks, ‘POST’ and ‘NEOPOST’.

The element ‘POST’ is commonly used in part of the EU to indicate, among other services, ‘a system of mail delivery’, that is, a particular kind of service most commonly involving the receipt, transportation and delivery of letters and parcels. Moreover, the word ‘POST’ will also be understood to mean, inter alia, ‘to put up a notice in a public place’ or ‘to announce by means of a poster’. In recent years, the word ‘POST’ has become more widely understood with this latter meaning in the relevant territory because of its extensive use in social networking media.

In line with the above, and despite the fact that the German market for postal services was one of the first to be liberalised, the word ‘POST’ in Germany, when used on its own, may be associated by German consumers with the former national postal operator and its legal successor in connection with goods and services that have been or have become closely connected with (or are available from) the national postal network and post offices. This conclusion is supported by several surveys submitted by the opponent, as listed below.

Bearing in mind that the relevant services of the earlier mark are, inter alia, collecting, forwarding and delivery of direct and indirect mail advertising, postal and delivery services, the element ‘POST’ is, per se, non-distinctive or, in any event, weak for all the services, namely collecting, forwarding and delivery of direct and indirect mail advertising in Class 35 and transport and delivery of items in Class 39.

The contested mark, ‘NEOPOST’, has no meaning as a whole for the relevant public and is, therefore, distinctive. This is because the verbal element ‘NEO’ is a prefix meaning ‘new/young’, but in German it is used only in combination with ideologies or art forms, etc., that have experienced a revival or are linked to another, such as neoclassicism or neo-colonialism (information extracted from Duden German dictionary on 27/02/2017 at www.duden.de). Therefore, this prefix makes no sense in connection with the word ‘post’. It must be recalled, however, that the relevant public may perceive one-word signs as being composed of different elements, in particular where one (or all) of the parts has a clear and evident meaning. At least part of the German public may, therefore, dissect the mark into the elements ‘NEO’ and ‘POST’ and understand the mark as meaning ‘new post’. As regards the component ‘POST’, the same considerations as stated above for the earlier mark are equally applicable to the contested mark.

Visually, the signs coincide in the letters ‘POST’, which constitute the whole earlier mark. This element, on its own, is non-distinctive or in any case weak. The signs differ in the additional letters constituting the prefix ‘NEO’ of the contested mark.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Therefore, the different beginnings of the signs are significant with regard to the visual perception of the signs.

Bearing in mind that the coincidences lie in a non-distinctive/weak element, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛POST’, present identically in both signs. The pronunciation differs in the sound of the initial letters ‛NEO’ of the contested mark, which have no counterparts in the earlier sign. Bearing in mind the fact that the coincidences lie in a non-distinctive/weak element, it is concluded that the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The earlier mark, ‘POST’, and the contested sign, ‘NEOPOST’, are conceptually similar to a low degree, to the extent that they have in common the meaning of the coinciding element ‘POST’.

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

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier trade mark enjoys a high degree of distinctiveness as result of its long-standing and intensive use in Germany in connection with all the services for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, 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). Considering that the evidence of use will be set out in its entirety in this section, the Opposition Division will also determine here whether or not the earlier mark has a reputation, as this will be relevant later in the examination of the opposition.

The opponent submitted the following evidence:

Annex 1        An excerpt from Duden dictionary (www.duden.de) showing the entry for the word ‘Post’ followed by the symbol ®.

Annex 2        Excerpts from the website www.wikipedia.org, containing references to the sign , referred to as the ‘Deutsche Post brand’, and the opponent’s website, www.dpdhl.com, in which the company’s history is explained in detail. The opponent emphasised in its observations that the word ‘Post’ was exclusively connected with Deutsche Bundespost (the German state postal service), the opponent’s legal predecessor for almost 50 years, and that, even after the privatisation of the original German state postal service in 1995, the German public still associated the word ‘Post’ with the opponent, as the legal successor.

Annex 3        Copies of reports entitled ‘brand€evaluation’ for the years between 2005 and 2014, prepared by Semion®Brand-Broker GmbH, showing the value of the brand ‘Dt, Post’ (about EUR 13 million on average for 2013 and 2014), which was sixth in the ranking of the most valuable German trade marks during the period 2009-2014.

Annex 4        Deutsche Post DHL’s annual report 2014, showing an eight-year overview of the opponent’s revenue in the division ‘Post-eCommerce-Parcel’ (which, until 2013, was called ‘Mail-division’).

Annex 5        Two consumer surveys conducted by independent survey institutes, namely Ipsos Deutschland GmbH (2000) and NFO Infratest (2002), about the degree of public awareness of the trade mark ‘POST’. According to the results of the Ipsos survey concerning the secondary meaning of ‘POST’, when the interviewees were shown the name ‘POST’, 94.9% of them declared that this name was known to them in connection with the relevant services, and 77.6% recognised the name ‘Post’ as referring to a ‘quite specific company’. Of the interviewees, 70.6% named ‘Deutsche Post (AG)’, ‘Post (AG)’, ‘Bundespost’, ‘Gelbe Post (AG)’, ‘Post Express’ or something similar when asked for the name of the undertaking they associated with this word. According to the survey conducted by NFO Infratest in November and December 2002, 67.8% of the interviewees spontaneously associated the designation ‘POST’ with a certain enterprise in Germany.

Annex 6        A consumer survey conducted by TNS Infratest in 2005 (an explanation of the methodology used for the survey is included) that gives information about the degree of awareness of the word ‘POST’, indicating that 83.9% of the German population associated the word ‘POST’ with the opponent and, therefore, this survey reaffirms the results of the two surveys conducted in 2000 and 2002 submitted as Annex 5.

Annex 7        A market survey entitled ‘Post: Distinctive character of this designation in connection with the transportation of letters and parcels’ (an explanation of the methodology used for the survey is included), carried out by Pflüger Rechtsforschung GmbH in October and November 2015 on 2 000 interviewees. The survey found that 97.5% of interviewees knew the designation ‘Post’ in the context of the transportation of letters and parcels, and 68.2% connected the name ‘Post’ with the opponent.

Annex 8        A decision of the German Federal Patent Court regarding cancellation proceedings 26 W (pat) 27/06, dated 28/10/2010. This decision rejects a request for cancellation based on an alleged lack of distinctiveness because surveys in 2000 and 2002 had demonstrated that 78% of those surveyed associated the word ‘POST’ with postal services provided by the opponent. The Court held that the trade mark ‘POST’ had acquired a secondary meaning in trade circles prior to the date of the decision rendered on its registration, as a result of its use for the services in respect of which registration was sought. The Court considered that use in the form ‘Deutsche Post’ had to be taken into consideration when determining the use of ‘POST’.

Annex 9        A scholarly article by Dr Büscher, a judge at the IP Senate of the German Supreme Court, published in 2006, according to which the trade mark ‘POST’ fulfils not only the requirements for distinctiveness acquired through use, but also the requirements for a well-known trade mark in Germany, as almost 85% of the general public associated ‘POST’ with a particular company in relation to postal services. An extract from the article that the opponent considers relevant has been translated into English.

Annex 10        Printouts from the internet, showing the slogans ‘Die Post im Internet. Der E-postbrief’ (‘The Post on the Internet. The E-Postbrief’) and ‘Die Post im Internet. Der E-Postbrief kommt’ (‘The Post on the Internet. The E-Postbrief is coming). Some of the pages have the sign  in the top-left corner.

Annex 11        A printout from the website www.slogans.de (dated 14/07/2010), with the heading ‘Deutsche Post starts the E-Postbrief’, with a partial translation into English, stating: ‘With one of the biggest media campaigns of the year Deutsche Post mobilises the citizens for the new E-Postbrief’. The following sign appears on the printout: .

Annex 12        Printouts from www.horizont.net, dated 14/07/2010, partly translated.

Annex 13        An article from the website www.postandparcel.info (dated 05/11/2010) entitled ‘Deutsche Post reaches hybrid mail landmark’. Reference is made to only the ‘E-Postbrief’.

Annex 14        A press release from www.marktforschung.de (dated 14/11/2011) on the German public’s awareness of ‘E-POSTBRIEF’.

Annex 15        A presentation on the opponent’s advertising campaigns for ‘E-POST/E-POSTBRIEF’, during the period 2010-2013, depicting the signs  and  and featuring, as explained by the opponent, ‘various celebrities well-known to the German public’ (untranslated).

Annex 16        ‘Brand assessment BRIEF 2010’ from the Market Research Service Center, stating that the brand awareness of the sign  is over 90%.

Annex 17        Two market analyses by the German Federal Network Agency (Bundesnetzagentur), dated September 2009 (market data for 1999-2008) and April 2013 (market data for 2008-2011), providing analyses of licensees in the mail sector; a breakdown of turnover figures in the licensed mail sector by provider shows that, in 2011, ‘Deutsche Post’ was responsible for 90% of turnover in the sector.

Annex 18        Excerpts from a study by WIK-Consult, dated 28/01/2014, stating in the section ‘Postal market trends’ that ‘Deutsche Post is still the uncontested market leader with a market share of nearly 90%’.

Annex 19        A list from the Cedelex database of 219 ‘POST’ trade marks held by the opponent.

Annex 20        Printouts from the websites www.deutschepost.de and www.epost.de of what appear to be pages offering or promoting mail services, depicting the signs ‘Postident’, ‘PostKIT’, ‘POSTCARD’, ‘INFOPOST’, ‘POST-24/7’, ‘POSTFACH’, ‘E POST’,  and , some with a copyright notice dated 2011. The sign appears on most of the pages.

The evidence indicates in general that a high percentage of the relevant public in Germany is aware of the sign ‘POST’ and that a significant portion of the relevant consumers may still link this sign to the former national postal services operator or to its legal successor.

However, this does not mean that, for the purposes of this assessment, the earlier mark has achieved enhanced distinctiveness or reputation, which would normally lead to a broader scope of protection for the earlier mark. The results shown in the surveys can be explained by the specifics of the market reality in the sector.

The word ‘POST’ refers first and foremost to postal services in general. In German in particular, it is a reference to a particular kind of service, most commonly involving the receipt, transportation and delivery of letters and parcels. While this may have been a service carried out by a single state-owned entity in the past (and consequently the provision of these services was necessarily attributed to this entity), this is no longer the case. In general, these types of services may be rendered by numerous companies. In German, ‘POST’ is also the word used for the items actually delivered by companies providing postal services. Someone waiting for the ‘POST’ in Germany would, thus, be waiting not for a particular enterprise but for letters or parcels to be delivered by anyone who does so. Although a very high percentage of the relevant German public recognises the trade mark significance of the word ‘POST’, this does not, in itself, demonstrate that this word has the value of a unique indicator of origin when it is incorporated into trade marks that differ in overall appearance, pronunciation and concept from the single word ‘POST’. In this respect, it should be noted that, although the article headings refer to ‘POST’, most of the articles contain additional references to the opponent, Deutsche Post AG.

It is evident from the documents submitted that the trade mark ‘POST’ was registered in Germany in 2003. Having its roots in the Italian word poste (from the Latin posita, ‘something placed’, or ponere, ‘to put, place’), the word ‘POST’ found its way into German, with the meaning explained in section c) above, long before the registration of the opponent’s trade mark. The Opposition Division does not question the validity of the registration of the earlier mark. Indeed, a finding of an absolute lack of distinctive character would not be compatible with the coexistence of European Union trade marks and national trade marks or with Article 8(1)(b) EUTMR, read in conjunction with Article 8(2)(a)(ii) EUTMR (24/05/2012, C-196/11 P, F1-Live, EU:C:2012:314, § 42-45). The Opposition Division is not in a position to find that the earlier national mark is completely devoid of distinctive character, as this would amount to calling into question the validity of the national mark. This cannot be done within the framework of opposition proceedings.

The fact remains, however, that the word ‘POST’, per se, is devoid of distinctive character in respect of the opponent’s postal and related services. The earlier trade mark, ‘POST’, has been registered only following distinctiveness acquired through use. The German Federal Court of Justice considered the earlier mark to have only a minimal scope of protection due to the descriptive function of this term (23/10/2008, I ZB 48/97, Post II, § 35-36). The Opposition Division considers that, in the case in question, the degree of distinctiveness of the earlier mark, ‘POST’, must be seen as low in the current examination.

5. Global assessment, other arguments and conclusion

The contested services are partly similar to a low degree and partly dissimilar to the opponent’s services.

The signs are visually, aurally and conceptually similar to a low degree. The earlier mark consists entirely of the non-distinctive/weak element ‘POST’, which will be related immediately to the meanings specified above. The contested mark consists of the word ‘NEOPOST’, which has no meaning as a whole in the relevant territory, although it may be split into ‘NEO’ and ‘POST’. The earlier mark is entirely included in the contested sign.

However, the relevant public, when confronted with the contested mark, ‘NEOPOST’, would not attribute it to the opponent’s company – which used to hold a monopoly for postal services – but would instead assume that a new competitor had entered the market, that is, the relevant public would assume that the services in question had a different commercial origin. In combination with the additional element ‘NEO’ and bearing in mind its generic nature, the word ‘POST’ will not be perceived as a reference to the opponent; instead, the whole mark will be perceived as a new, invented word with no specific meaning. Furthermore, if perceived with the possible meaning of ‘new post’, the contested mark will be perceived as identifying a new postal services provider as opposed to the old/traditional formerly state-owned postal services provider.

Furthermore, the differing element is the first element of the contested sign. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the Opposition Division finds the visual, aural and conceptual differences between the signs to be sufficient (also bearing in mind the observations about the non-distinctive/weak distinctive character of the earlier sign) for the consumers to safely distinguish between the marks.

Bearing in mind the above, there is no reason for the average German consumer, who for the purposes of the assessment is deemed to be reasonably well informed and reasonable observant and circumspect, to believe that the marks under comparison come from the same undertaking or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected as far as Article 8(1)(b) EUTMR has been invoked.

It remains necessary to consider the opponent’s argument that the earlier trade marks, all characterised by the presence of the same word component ‘POST’ constitute a ‘family of marks’ or ‘marks in a series’. In its view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark which contains the same word component as the earlier marks, will be led to believe that the services identified by that mark may also come from the opponent.

In fact, the concept of the family of marks was exhaustively analysed by the General Court in its judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65.

When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’, a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.

Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’.

In the present case, the opponent failed to prove that it uses a family of ‘POST’ marks, and moreover that it uses such a family in the same fields as those covered by the contested trade mark. The evidence submitted by the opponent shows numerous trade marks, such as ‘INFOPOST’, ‘E POST’, ‘DEUTSCHE POST’, ‘POSTBOX’, ‘meine KINOPOST’, ‘POSTKIT’ and ‘POSTSHOP’, some of which are figurative. However, bearing in mind that the coinciding element ‘POST’ is weak, it is considered that there is no component in the contested sign that would clearly be linked to the alleged series of earlier trade marks.

Consequently, the opponent’s argument concerning the family of marks must be rejected.

The opponent also refers to previous refusals of German and EU applications for trade marks consisting of, or referring to, the component ‘NEO’, due to a lack of distinctiveness. These decisions are not relevant in the present case, as they do not refer to opposition proceedings.

The examination proceeds under the other ground of opposition invoked by the opponent in relation to the same earlier right, namely 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 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 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. The ‘link’ between the signs

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 have been found to be visually and aurally similar to a low degree, owing to the verbal element ‘POST’ that they have in common. This does not mean that the relevant public is likely to establish a link between them. When consideration is given to the services in question and the market reality in the sector of postal services, it is clear that the similarities between the signs in dispute lie in an element that is descriptive for the relevant services. Even though a remote conceptual connection could be found between the earlier mark and the element ‘POST’ in the contested mark, this element is of limited distinctiveness, as it refers to postal services in general and could be attributed to any company that provides this type of services.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it can be virtually excluded that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them.

For the sake of the completeness of the examination, it is noted that even if part of the public could possibly establish a link between the contested sign and the earlier sign, and even under the assumption that the earlier mark has a reputation, there is no reason to believe that the use 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, as explained below.

3. 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 claims the following:

As the earlier trade mark, ‘POST’, enjoys a high degree of reputation in Germany, the use of the contested international registration, ‘NEOPOST’, would take unfair advantage of this repute. This is not only because of its widespread recognition among the relevant public, but also because of the intensity and duration of its use and the investment made by the opponent in promoting it via extensive advertising, sponsorship and press coverage. It is therefore obvious that the use of the international registration ‘NEOPOST’ would take unfair advantage of the repute and positive image of the opponent’s well-known trade mark ‘POST’, involving undue free-riding on the substantial goodwill that lies within the earlier trade mark. This means that the distinctiveness of the earlier trade mark will be detrimentally affected if the public ceases to associate it with a given range of goods and services originating from a single source and starts associating it with goods and services with distinct origins.

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

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

Class 35:        Computer-assisted mail franking services, mail franking services via the Internet, services for the selection and processing of private and company addresses by means of computer networks, assistance and consulting services in the field of mail management, assistance and consulting services for business management in the field of logistics, transport, and transport of merchandise, parcels and mail; document reproduction services; drawing up statistics; assistance to companies in optimizing parcel and mail dispatch rates and in the management of their spending, these services can be provided online; computerized file management; compilation of information into computer databases, these services can be provided online; assistance to companies in managing their dispatch services for letters or parcels, these services can be provided online; providing personnel for others for performing mail processing operations.

Class 36:        Financial services, financial account management services for remote franking of letters and parcels; postal credit recharging services; services for processing transfers and cost deductions of franking letters and parcels; leasing, rental with promise of sale of all equipment, machines, apparatus and devices in connection with the processing, transport and delivery of mail, of all plants, all workshops, offices and premises; portfolio management of shares and securities and operations relating thereto, management of all buildings.

Class 38:        Telecommunication services, telecommunication services via computer networks, services providing access to computer telecommunication networks, communication services via computers grouped on a global communication network (the Internet) or to a private or restricted access network (intranet type), services providing means of access to a server for services in the fields of processing, logistics and transport of merchandise, parcels and mail.

Class 39:        Rental without commitment to sell of all equipment.

Class 42:        Design and development of computer software, software maintenance, research and expertise services in the field of mail and parcel processing techniques, consulting and assistance services for the installation, maintenance and updating of systems (software) for the electronic processing of data for tracking, monitoring and locating parcels, mail and pallets during their processing, transport and delivery, consulting services for the installation of systems (software) for the electronic processing of data for tracking and locating packages, mail and pallets during their transport and delivery; services for the conversion of computer programs and data; services for the conversion of data and documents from physical to electronic media.

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).

In the present case, there is no evidence of unfair advantage or any kind of exploitation of the ‘fame’ of the earlier mark – the presence of a generic word in the composition of the contested mark denotes only the kind of services offered. Economic entities should not be prevented from using descriptive connotations in their trade marks. The use of such descriptive connotations in no way means that that they are trying to take unfair advantage of the distinctive character or the repute of earlier marks also using such terms, let alone trade marks solely consisting of such terms. The line of arguments developed by the opponent cannot be followed.

On the basis of the above, the Opposition Division concludes that the use of the contested trade mark, ‘NEOPOST’, will not take unfair advantage of the distinctive character or the repute of the earlier mark.

Detriment to the distinctive character (dilution)

The opponent argues, furthermore, that there is a clear risk of dilution of the distinctive character of its trade mark, ‘POST’, if the contested international registration ‘NEOPOST’ was put to use, particularly as it covers services that are similar to those for which the earlier trade mark, ‘POST’, is registered and enjoys a reputation. In the long run, the use of the contested mark in the same market in which the opponent is active would unavoidably weaken the established position of the opponent’s well-known trade mark.

Detriment to the distinctive character of the earlier mark (also referred to as ‘dilution’, ‘whittling away’ or ‘blurring’) is caused when that mark’s ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to ‘dispersion’ of the identity of the earlier mark (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 29).

According to the Court of Justice of the European Union, ‘… the existence of injury consisting of detriment to the distinctive character or the repute of the earlier mark must be assessed by reference to average consumers of the goods and services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect’ (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 35).

If the distinctive character of an earlier trade mark is one of the circumstances generally relevant for the applicability of Article 8(5) EUTMR, it is particularly relevant in cases where precisely the distinctive character of the earlier trade mark is allegedly being put at risk.

‘Erosion’ of the earlier trade mark’s distinctive character (sometimes called ‘dilution by blurring’) is more likely where the elements of the trade marks giving rise to similarity between signs enjoy a considerable degree of inherent distinctive character. As mentioned by the Court of Justice, ‘the more “unique” the earlier mark appears, the greater the likelihood that the use of a later identical or similar mark will be detrimental to its distinctive character’ (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 74).

By contrast, likelihood of dilution is less likely when such elements have only a limited degree of inherent distinctive character. ‘… [T]he risk of dilution appears, in principle, to be lower if the earlier mark consists of a term which, because of a meaning inherent in it, is very common and frequently used, irrespective of the earlier mark consisting of the term at issue. In such a case, re-use of the term in question by the contested trade mark is less likely to result in a dilution of the earlier mark’ (22/03/2007, T-215/03, Vips, EU:T:2007:93, § 38).

In the present case, the circumstances do not suggest that use of the contested trade mark will result in dilution of the earlier trade mark. The word ‘POST’ (although registered as a trade mark in Germany) is a generic word per se and is extensively used to designate the system of mail delivery. Therefore, its inherent distinctiveness is of such a nature that it simply cannot be diluted any further.

For the sake of completeness, it is noted that the opponent claims in the notice of opposition and briefly in its observations that the use of the contested sign would be detrimental to the repute of the earlier mark; however, no further arguments were provided to justify such a finding and the evidence submitted could not lead to such a conclusion. Therefore, it is concluded that no detriment to the repute of the earlier mark has been proven.

As seen above, it has not been established that 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 as required by Article 8(5) EUTMR. As one of the necessary requirements is not met, the opposition must be rejected as not well founded under Article 8(5) EUTMR.

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

Irina SOTIROVA

Lena FRANKENBERG GLANTZ

Plamen IVANOV

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.