OPPOSITION No B 2 657 768
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, 42-46 Avenue Aristide Briand, 92220 Bagneux, France (holder), represented by Cabinet Beau de Lomenie, 158, rue de L'Université, 75340 Paris Cédex 07, France (professional representative)
On 30/06/2017, the Opposition Division takes the following
1. Opposition No B 2 657 768 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against some of the goods and services of international registration designating the European Union No 1 259 924, namely against all the goods and services in Classes 7, 16, 20, 37 and 39 and part of the goods and services in Classes 9, 35, 36, 38 and 42. The opposition is based on German trade mark registration No 30 012 966. The opponent invoked Article 8(1)(b) and 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 goods and 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 goods and services are the following:
Class 7: Machines for processing mail, in particular folders, inserters, parts and spare parts of such machines; letter sorting machines; splitters, namely paper processing machines for automatically separating computer-produced documents in a continuous strip; extractors, namely machines used for opening letters and automatically extracting the contents; automatic distribution machines for mail and parcels; letter sorting machines, addressing and bar code equipment for mail applications, namely addressing and encoding machines.
Class 9: Postal scales, apparatus to check mail franking, bar code readers; recorded software for managing mail dispatch (letters, messages, parcels, newspapers), franking and the processing of all related documents; apparatus, instruments, organs and devices for the generation, calculation, control, inputting, storage, conversion, processing, collection, transmission, switching and receipt of data, information, signals or messages, computers and computer peripheral devices, especially printers; counter equipment for franking applications, namely apparatus to check franking specifically designed to be placed on counters; electronic apparatus for the franking (payment and recording) of mail and transport costs (private dispatch services), for letters and parcels, including by remote control and downloading, via the Internet and intranet networks; electronic coin-operated booths for franking letters and parcels (sent by private mail services or transporters); software (recorded programs); electric apparatus for parcels and mail.
Class 16: Equipment, apparatus and devices for processing mail, including franking machines, franking bases and heads, arts and spare parts of machines for franking, letter openers, postal machines for post offices and in particular distribution machines for postal applications, counter equipment for franking applications, namely machines for franking specifically designed to be placed on counters; printing products (printed matter); envelopes; labels, not of textile; wrapping paper; address stamps; address stamps; sealing machines for offices; manuals [handbooks]; booklets; bags (envelopes, pouches) of paper or plastics, for packaging.
Class 20: Office furniture especially designed for mail processing equipment, apparatus and devices.
Class 35: 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; 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; administrative organization of the transport, delivery, distribution, sorting, carriage and storage of goods and parcels; retail and wholesale of postal scales, apparatus to check franking, bar code readers, software, machines for processing mail (folders, inserters), machines for sorting letters, envelopes, wrapping paper, bags (envelopes, pouches) of paper or plastic for packaging.
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 or without 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; providing personnel for others for performing mail processing operations; customs brokerage.
Class 37: Installation, maintenance and repair of all machines, all devices, apparatus and equipment in connection with mail processing.
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; electronic mail, electronic messaging and transmission of information by electronic means, especially by global telecommunication networks, (such as the Internet) or private or restricted access networks (such as the Intranet); supply (transmission) of information on the transport of letters and parcels.
Class 39: Transport, delivery, distribution and carriage of goods, mail and parcels; packaging and storage of goods, mail and parcels; transport organization services; freighting; rental of transport vehicles; sorting and storage of goods, mail and parcels; Deliveries in all forms, especially via transportation to the recipient or a point-of-sale or intermediary depot, as a result of orders, particularly through the Internet, computerized or not, including on behalf of goods suppliers, through the Internet or via any other computer, communication or other means, and their clients, individuals or institutions; transport information; physical storage of electronically-stored data or documents; freight brokerage or transport brokerage; corporate assistance for managing the dispatch of letters or parcels, with these services also available online; rental without commitment to sell of all equipment, machines, apparatus and devices in connection with the processing, transport and delivery of mail; tracking during transport by the electronic location of the destination of products and goods, particularly documents, packages, parcels; rental of storage containers; computer-assisted mail franking, mail franking via the Internet.
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.
Some of the contested goods and services are identical or similar to services 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 and services were identical to those of the earlier mark. It is to be noted that all the relevant goods and services can be related to (electronic) mail or to postal delivery.
- Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the goods and services assumed to be identical or similar are directed at the public at large and at a specialized public on the postal sector. The degree of attention is average.
- The signs
Earlier trade mark
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.
The earlier mark is a pure word mark, consisting of the single word ‘POST’. As a word mark, it has no element that could be considered more dominant (visually eye-catching) than other elements.
The contested sign is a figurative mark in green, composed of a figurative element of some straight connected lines and, below, the word ‘NEOPOST’. None of its elements could be considered more dominant (visually eye-catching) than other elements. Although in general the verbal element has a stronger impact than the figurative element, this does not necessarily apply to all the cases. In the present case the figurative element is distinctive and visually as eye-catching as the verbal element due to its central position in the upper part of the mark.
Regarding the meaning of the verbal element ‘POST’, the relevant public will perceive this term mainly as ‘die Post: 1) Dienstleistungsunternehmen zur Beförderung von Briefen, Paketen, Geldsendungen u.a., ®; 2) Postfiliale; 3) etwas, was von der Post zugestellt worden ist oder von der Post befördert werden soll; 4) (umgangssprachlich) Zustellung von Post’ (Duden Online Dictionary, 15/05/2017) and translated as: 1) company providing the service of conveying letters, parcels, cash remittances, etc. ®; 2) post-office branch; 3) something that has been delivered by the post office or is to be conveyed by the post office; 4) colloquial term for ‘postal delivery’.
The term ‘POST’ will also be understood as: ‘der Post: Beitrag, den jemand postet’, (Duden Online Dictionary, 15/05/2017, which refers to ‘an item published online’). Because of its extensive use in social networking media in recent years the term ‘POST’ has gained popularity in the entire German territory.
The word ‘POST’, contained in both signs, is per se non-distinctive in relation to goods and services relating to the physical or electronic delivery of mail and other items.
According to case-law, in opposition proceedings before the Office the validity of national trade marks may not be called into question for absolute grounds (such as lack of distinctive character, descriptive or generic character), under Article 7 EUTMR. Therefore, it is necessary to acknowledge a certain degree of distinctiveness in a registered national mark (24/05/2012, C-196/11, F1-Live, EU:C:2012:314, §§ 41, 47). The Opposition Division accordingly considers that the earlier trade mark ‘POST’ is a registered national trade mark and that, in terms of absolute grounds for refusal, it had at least the minimum degree of distinctive character required for registration at the date of filing (22/02/2000). However, the earlier mark ‘POST’ has only a low degree of distinctiveness (13/05/2015, T-102/14, TGP Post, EU:T:2015:279, § 68).
The opponent argues that the verbal element ‘NEO’ is weak. The Opposition Division agrees, as the prefix ‘NEO’, contained in the contested sign, refers to a new or revived form of something (Duden Online Dictionary, 15/05/2017).
The opponent considers the figurative element of the contested sign to be a simple geometric form which has a low degree of distinctiveness and a repetition of the letter ‘N’ of the following word ‘NEOPOST’. The Opposition Division cannot agree. The figurative element of the contested sign is made up of several connected straight lines; it is more than a simple geometric form. It is not a repetition of the letter ‘N’, because the vertical lines are more separated and it contains an additional line to the letter ‘N’, namely the one that goes from the lower left corner to the centre. Conceptually, the figurative element does not represent anything.
The term ‘NEOPOST’, as a whole is not listed in dictionaries. Although it may not be excluded that a part of the public may perceive it as a meaningful combination referring to ‘a new or revived (electronic) mail or delivery’ – which consequently will be of limited distinctiveness –, for another part of the public it will be a coined word without a clear concept going beyond the combination of the elements. The figurative element of the contested sign is distinctive.
Visually, the signs coincide in the per se non-distinctive word ‘POST’. They differ in the weak prefix ‘NEO’ and in the distinctive figurative element of the contested mark. Overall, 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 first word of the earlier sign, ‘NEO’, which has no counterpart in the other sign. The earlier mark contains one syllable, the contested one three (/NE-O-POST/), which leads to a different rhythm and intonation. The signs are aurally similar to a low degree.
Conceptually, the earlier sign has the meanings indicated above, including ‘a reference to an undertaking’, ‘an item published online’, ‘mail’ or ‘postal delivery’. The relevant public may perceive one-word signs as composed of different components, in particular, in cases where those components have a clear and immediate meaning. Therefore, the relevant public will very likely perceive the contested sign as composed of the verbal elements ‘NEO’ and ‘POST’ with the meaning of: new or revived (electronic) mail or delivery. It is to be noted that the prefix ‘NEO’ changes the possible meaning of the contested sign to a meaning that prevents the term ‘POST’ from being perceived as a reference to the opponent. Since the common element will not be seen as a reference to an undertaking, the conceptual similarity on account of the per se descriptive meaning of ‘POST’ will be at most low.
As the signs have been found similar in at least one aspect of the comparison, the examination of Article 8(1)(b) EUTMR will proceed.
- 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 German trade mark No 30 012 966 enjoys a high degree of distinctiveness/reputation „due to an extensive and longstanding 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 is set out in its entirety in this section, the Opposition Division will also determine here whether or not the earlier mark has a reputation insofar as it is relevant to the opposition.
The evidence was presented in a clear and structured manner and consists of the documents listed below. For the sake of clarity and ease of reference, the Opposition Division will follow the numbering of items provided by the opponent.
The opponent filed the following evidence:
Annex 1) Printout from the German online dictionary Duden, www.duden.org, with an entry for the word ‘POST’ with the following meanings (translated into English): ‘1) company providing the service of conveying letters, parcels, cash remittances, etc., this is followed by the symbol ®, which indicates that the word is used as a trade mark; 2) post-office branch; 3) something that has been delivered by the post office or is to be conveyed by the post office; 4) colloquial term for ‘postal delivery’.
Annex 2) Printouts from Wikipedia, www.wikipedia.org (printed 16/12/2015), and from the opponent’s homepage (printed 16/12/2015), with information about the history and present status of the undertaking from its establishment until the present day. The evidence refers to the opponent’s brands ‘Deutsche Post’, ‘DHL’, ‘Power Packaging’, ‘ePost’ and ‘E-Postbrief’. The Deutsche Post brand is depicted as .
Annex 3) Excerpts from Semion® Brand-Broker GmbH evaluations of well-known German trade marks dated from 2005 to 2014. During this period, the mark ‘Dt. Post’ appears in fourth, fifth and sixth position. It shows the brand value at approximately EUR 15 million. In 2007, an additional remark states, ‘the opening of the market and the loss of rights to the generic word mark ‘POST’ diminish the brand value’.
Annex 4) Excerpts from the Deutsche Post DHL Group Annual Report of 2014 giving key figures for the period 2007 to 2014. The excerpt includes a yearly breakdown of company revenue in each field, one of them named as ‘Post – eCommerce – Parcel (until 2013 Mail)’.
Annex 5) Two consumer surveys (with an explanation of the methodology used for the surveys included) conducted by independent survey institutes, namely IPSOS Deutschland GmbH (2000) and NFO Infratest (2002) about the public’s degree of awareness of the trade mark ‘POST’. According to the results of the IPSOS Deutschland GmbH (2000) survey concerning the secondary meaning of ‘POST’, when interviewees were shown the name ‘POST’, 94.9% of them related it to the relevant services, and 77.6% recognised a specific undertaking behind those services. A total of 70.6% of the interviewees named ‘Deutsche Post (AG)’, ‘Post (AG)’, ‘Bundespost’, ‘Gelbe Post (AG)’, ‘Post-Express’ or something similar when asked for the name of the undertaking they associate with this word. According to the survey conducted by NFO Infratest in November/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 (with an explanation of the methodology used for the surveys included) that gives information about the degree of awareness of the word ‘POST’ and shows that 83.9% of the German public associated the word ‘POST’ with the opponent, thereby reaffirming the results of the previous two surveys conducted in 2000 and 2002 submitted as Annex 5.
Annex 7) A market survey carried out by Pflüger Rechtsforschung GmbH in October and November 2015. The survey contains information on the methodology, number of respondents (sample of 2 000 interviewees), type of questions asked, data analysed and results referring to the awareness of the sign ‘POST’ and its association with one particular undertaking. According to the results, 97.5% of the German population knows that the word ‘Post’ refers to the transport of letters and parcels. The designation ‘Post’ has a degree of distinctiveness of 81.0% among the total population in Germany in connection with the transport of letters and parcels, that is, the percentage of interviewees associating ‘Post’ exclusively with one particular undertaking. A total of 68.2% of the correct literal allocations of this designation refer to the company ‘Deutsche Post AG’ after clarifying questions. Without the clarifying questions, this percentage is 63.8%.
Annex 8) Decision of the German Federal Patent Court regarding Cancellation Proceedings 26 W (pat) 27/06, dated 28/10/2010. The decision rejects the request for cancellation based on an alleged lack of distinctiveness, due to surveys in 2000 and 2002 that show that 78 % of those surveyed associate the term ‘POST’ with postal services provided by the opponent. The Court held that the trade mark ‘POST’ had acquired a secondary meaning amongst 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 it had been applied for. The Court considered that use in the form ‘Deutsche Post’ had to be taken into consideration when determining the use of ‘POST’.
Annex 9) An undated scholarly article by Dr. Büscher, a judge at the IP Senate of the German Supreme Court, according to which the trade mark ‘POST’ fulfils not only the requirements for distinctiveness acquired through use, but also those for a well-known trade mark in Germany, as for postal services almost 85 % of the general public associate ‘POST’ with a particular company. According to the opponent the article dates from 2006.
Annex 10) Printouts from the Internet showing use of the slogans ‘Die Post im Internet. Der E-Postbrief’ (www.epost.de/privatkunden.html, 28/01/2011, translated by the opponent as ‘The Post on the Internet. The E-Postbrief’), ‘Der E-Postbrief kommt‘ (www.number1.biz, dated 10/07/2010, translated by the opponent as ‘The E-mail letter arrives’) and ‘Bonn: Deutsche Post offers confidential letters on the Internet – the online letter (“E-Postbrief”)‘ (http://bonner-presseblog.de, dated 11/10/2010).
Annex 11) Printout from the webpage, www.slogans.de (dated 14/07/2010), with the title ‘Deutsche Post startet E-Postbrief: “Verbindlich. Vertraulich. Verlässlich.’’’ (translated as ‘German Post launches e-mail letter: “Binding. Confidential. Reliable’’)’.
Annex 12) Article from the webpage www.horizont.net (dated 14/07/2010), with the heading ‘Deutsche Post startet Mega-Kampagne für den E-Postbrief’.
Annex 13) An article from the website www.postandparcel.info (dated 05/11/2010) entitled ‘Deutsche Post reaches hybrid mail landmark’. Reference is made only to the E-POSTBRIEF.
Annex 14) Press release from www.marktforschung.de (dated 14/11/2011), on German public awareness of ‘E-POSTBRIEF’.
Annex 15) A presentation documenting the opponent’s advertising campaigns in 2010 to 2013 regarding ‘E-POSTBRIEF’ and ‘E-POST’.
Annex 16) Market research undertaken by MRSC in 2010, showing brand awareness of the trade mark amongst the rest of the German enterprises in the mail and delivery sector.
Annex 17) Copies of two market analyses carried out by the German Federal Network Agency in September 2009 and April 2013. In the 2009 analysis, the agency came to the conclusion that the opponent’s market share in the relevant market of the letter delivery services reached 98.8 % in 1999 and slightly more than 90 % in 2009. The opponent’s share of the turnover generated in this market reached 98.7 % in 1999 and 89.3 % in 2008. In the 2013 analysis, the agency investigated the same market share in respect of 2008 to 2011, and the results show that the opponent still held a market share of around 90 % in 1999 and 89.3 % in 2008. No reference is made to the trade mark ‘POST’.
Annex 18) Excerpts from an analysis published on 28/01/2014 by WIK-Consult GmbH and ITA Consulting GmbH. According to the document, Deutsche Post remains the undisputed leader in the traditional (paper mail) postal sector, with a market share of around 90 %, 10 years after the liberalisation of the postal services market in Germany.
Annex 19) Database excerpt from Cedelex listing more than 200 German or European Union trade marks owned by the opponent and consisting of or containing the word ‘POST’.
Annex 20) Printouts regarding use of some of the opponent’s trade marks ‘INFOPOST’, ‘E POST’, ‘E POSTBRIEF’, ‘POSTIDENT’, ‘POSTIDENT SPECIAL’, ‘POSTIDENT COMFORT’, ‘POSTIDENT BASIC’ ‘POSTKIT’, ‘POSTCARD’, ‘POST-24/7’, ‘POSTFACH’.
Relevant time period and territory, language of the documents
The opponent submitted the abovementioned evidence in order to prove the enhanced distinctiveness/reputation of the earlier mark. The Opposition Division notes that the evidence submitted by the opponent concerns the relevant territory, namely Germany. All evidence submitted in the original language, German, is supported with (partial) translations into English in compliance with the requirements of the Office.
Most of the evidence is dated prior to the filing date of the contested sign, namely 13/08/2015. The scholarly article by Dr. Büscher (Annex 9) is undated. The extracts from Wikipedia and from the opponent’s homepage (Annex 2) are dated later but refer to the relevant time period.
Probative value of part of the documents
Case-law has consistently held that information from collective encyclopaedias such as Wikipedia lacks certainty, because their content may be amended at any time and, in certain cases, by any visitor, even anonymously (18/06/2013, T-338/12, K9 products, EU:T:2013:327, § 32; 10/02/2010, T-344/07, Homezone, EU:T:2010:35, § 46; 16/11/2011, T-500/10, DORMA, EU:T:2011:679, § 55). Therefore, the probative value of the printout from Wikipedia (Annex 2) is considered to be low. Likewise, an issue also raised by the holder, the probative value of the printouts of the opponent’s homepage (Annex 2) is diminished, as it comes from the party itself and not from an independent third party. In any case, these documents concern the history of the opponent as an undertaking and do not contain information regarding the earlier mark ‘POST’.
The opponent as an undertaking, the market share and marketing campaigns
The opponent considers that the earlier mark enjoys a substantial reputation in Germany for services in Classes 35 and 39 due to the long-standing, continuous and intensive use of the earlier mark. The term ‘POST’ became an indication of origin of the opponent through its historical association with ‘Deutsche Bundespost’, the State postal services in Germany, which was the opponent’s predecessor. The term ‘POST’ was exclusively connected with Deutsche Bundespost (established in 1950) for almost 50 years. Even after its privatisation in 1995, the German public associated the term ‘POST’ with the opponent as its legal successor. Even nowadays, the opponent is still the leading postal undertaking for (traditional) mail delivery in Germany (Annexes 17 and 18). It has spent a considerable amount of money in marketing campaigns for ‘E-POST’, ‘E POSTBRIEF’ etc. (Annexes 10 to 15) and created high revenue (Annex 4).
The Opposition Division points out that the documents submitted to prove the high market share (Annexes 17 and 18) relate to the opponent itself and not to the earlier trade mark ‘POST’ on its own. They do not clarify to which of the several trade marks of the opponent the market share relates. Similar reasoning applies to the revenue as presented in the Deutsche Post DHL Group Annual Report of 2014 (Annex 4). The Annual Report refers to the opponent as an undertaking and does not differentiate between the different trade marks owned by the opponent. The field ‘Post – eCommerce – Parcel (until 2013 Mail)’ indicates the relevant area, here the term ‘Post’ is used in its meaning ‘mail’ and not as a trade mark. As regards the marketing campaigns (Annexes 10 to 15), it clear from the documents submitted that they concern other trade marks such as ‘E-POST’ or ‘E-POSTBRIEF’.
Registration of the earlier mark due to acquired distinctiveness
The opponent considers the registration of the earlier mark to be proof that it enjoys enhanced distinctiveness or reputation. The Opposition Division does not agree. Registration of the earlier trade mark due to distinctiveness acquired through use does not automatically mean that the trade mark also enjoys enhanced distinctiveness or reputation (13/05/2015, T-102/14, ‘TGP Post’, EU:T:2015:279, § 68), but only that it reached the required minimum level to be registered. The fact that the earlier mark just reached the threshold required to be registered as a trade mark, does not mean that it has acquired such a degree of distinctiveness that it can serve to oppose every latter mark in which it is contained (13/05/2015, T-102/14, ‘TGP Post’, EU:T:2015:279, § 44).
Even if the sign ‘POST’ acquired distinctiveness to serve as an indication of origin for the provision of postal services, its descriptive nature in relation to the subject matter of the services is out of the question (26/04/2017, B 2 667 726 POST/posta plus, corroborated by the German Federal Court of Justice in its decision of 23/10/2008, I ZB 48/07, Post II, § 35-36). The scope of protection of the sign ‘POST’ does not bar competitors from trade mark use of the term ‘POST’ according to honest practices in commerce and trade, provided such use is accompanied by other elements which help differentiate from the single trade mark ‘POST’ and such use is sufficient to maintain a distance from the opponent’s enterprise, within the requirements of avoiding likelihood of confusion (03/11/2014, R 2063/2013-1, PostModern/ Deutsche Post, §§ 6, 55).
Overall, the distinctiveness of the earlier mark is below average.
Listing of the earlier mark in dictionaries and its various meanings
As regards the opponent’s argument that the word ‘Post’ is to be found in the Duden dictionary followed by the sign for a registered trade mark, the Opposition Division finds it appropriate to note the following: The Duden dictionary lists various different meanings for the word ‘POST’. Only one of these meanings refers to a ‘company providing the service of conveying letters, parcels, cash remittances, etc.’, that is to say, an undertaking. This definition is followed by the ® sign, which indicates that the previous term is a registered trade mark. Using the ® sign in a dictionary to make people aware of the fact that a certain word is a registered trade mark is a measure intended to avoid a trade mark becoming generic. This situation will occur when a word that can initially function as a trade mark becomes the generic name for the relevant products or services ‒ irrespective of who has produced or provided them. If a trade mark loses its distinctiveness and becomes a purely generic word, then it also loses trade mark protection. However, it is impossible to reverse the process and ‘resurrect’ a generic word and make it capable of being a trade mark (unless it is long forgotten), nor is it possible to make an inherently generic word in relation to particular goods and services become other than a generic word by putting the ® sign next to the word, even if there might be legal grounds for that.
The other meanings of the term ‘POST’ concern postal services in the broader sense. In particular, they indicate the action of transport and delivery itself (postal delivery), the objects transported (mainly letters and parcels) or the physical place where postal services are offered (post office). The term ‘POST’, on its own, can refer to any of these meanings, one of which relates to a particular undertaking, while the other refers to postal services or to the place where they are provided.
The opponent’s services in Class 35 are registered with a view to distributing advertising materials in the form of mail, rather than providing independent marketing services, and in particular advertising. The postal services for which the opponent’s mark is registered in Class 39 consist of a system for transporting letters and other tangible objects, such as written documents, typically enclosed in envelopes, and also small packages for delivery to various destinations. All the relevant services may be covered by the expression ‘Post’ as a term directly describing their essence. Therefore, the word ‘Post’ can be used by the German public in its daily life without bringing to mind any additional association with the opponent’s trade mark or company. Consequently, the word ‘Post’ is purely descriptive for the services covered by the earlier mark, which are postal services. Therefore, it is a generic term for the services at hand (13/05/2015, T-102/14, ‘TGP Post’, EU:T:2015:279, § 38, 11/12/2013, R 2108/2012-1 TPG POST/ DP et al., §§ 42-47), which is also corroborated by the German Federal Court of Justice (23/10/2008, I ZB 48/07, Post II, § 35-36).
Liberalisation process in the relevant market
In the present case, particular attention must be paid to the changes in the relevant market, which took place due to the gradual liberalisation of postal services in the European Union (29/10/2012, R 2108/2012-1 TPG POST, § 63). From 1998 onwards, the postal monopoly was reduced by degrees following Directive 97/67/EC on common rules for the development of the internal market of Community postal services and the improvement of quality of service, Directive 2002/39/EC with regard to the further opening to competition of Community postal services, and Directive 2008/6/EC with regard to the full accomplishment of the internal market of Community postal services. Progressively, the postal services sector in the countries of the European Union was opened to new operators. Since 2008, the postal market has been fully liberalised in Germany. While postal services were carried out by a single state-owned entity in the past, this is no longer the case as they may be rendered by numerous companies nowadays.
Therefore, while the postal service 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. Likewise, the delivered items can be transported by various different entities. The relevant public will not necessarily link the term ‘POST’ with the opponent (13/05/2015, T-102/14, ‘TGP Post’, EU:T:2015:279, § 69). Although part of the relevant German public may still recognise the trade mark significance of the word ‘POST’, this does not, in itself, demonstrate that this word has the value of a unique origin indicator when it is incorporated into trade marks that differ in their overall appearance, pronunciation and concept from the word ‘POST’.
Assessment of surveys
The above mentioned liberalisation of the market is also relevant for the assessment of the surveys. Part of the surveys (Annexes 5 and 6) indicate that in 2000, 2002 and 2005 a very high percentage of the relevant public in Germany associated the term ‘POST’ with the opponent. However, even though revealing a significant level of public awareness at the moment they were carried out and due to which the earlier mark reached the threshold required to be registered as a trade mark, the results from the surveys cannot serve as a direct presumption that the earlier mark nowadays has an enhanced distinctiveness which goes beyond the minimum level to be registered or even a reputation by the time of the priority date of the contested sign on 16/05/2014, when the relevant market had changed considerably.
When assessing the distinctive character of the earlier mark, account must be taken of its distinctive character at the moment of the opposition proceedings and not at the moment of filing of the earlier mark, which in the present case was on 22/02/2000 (03/11/2014, R 2063/2013-1, ‘PostModern/Deutsche Post’, § 48). Part of the surveys (Annexes 5 and 6) were conducted at the beginning of the gradual liberalisation process. There is a difference of eleven or more years between the surveys and the priority date of the contested trade mark.
Due to the gradual liberalisation of the postal market in Europe and the corresponding changes of the undertakings in carrying out postal services, it cannot be automatically concluded that the current market situation corresponds with the results submitted for the years 2000, 2002 and 2005 respectively, and that the relevant public will nowadays associate the word ‘POST’ solely with the opponent (13/05/2015, T-102/14, ‘TGP Post’, EU:T:2015:279, § 69). Therefore, consumers are nowadays less likely to connect one particular organisation with the term ‘POST’. Instead, they will know that the postal sector is a competitive market where one can increasingly expect to find different companies offering postal services under trade marks containing the word ‘POST’ (13/05/2015, T-102/14, ‘TGP Post’, EU:T:2015:279, § 63).
As regards the survey submitted that was conducted in 2015 (Annex 7), the Opposition Division considers that the results of the survey do not support a finding of enhanced distinctiveness of the earlier word mark ‘POST’ in the German territory in connection with the transport of letters and parcels. The outcome that 97.5% of the German population are familiar with the word ‘POST’ in connection with the respective services is not surprising, since ‘POST’ is a generic German word used in relation to the transport of letters and parcels. There are no other generic equivalents in use. A mere knowledge of the word ‘POST’ in relation to the services for which the trade mark is registered therefore cannot serve as an indication of enhanced distinctiveness or even reputation of the word ‘POST’.
Moreover, the finding that 81.0% of the German population associate ‘POST’ exclusively with one particular undertaking does not support a high or even normal degree of distinctiveness of the word ‘POST’ for postal services. It can be interpreted as a mere indication that a significant number of the interviewees tend to rely on the same postal company when they require this type of service.
Finally, the result that 63.8% (unaided recognition) of the relevant public relate the word ‘POST’ to the company Deutsche Post (AG) is not an automatic indicator of enhanced distinctiveness of the earlier mark, ‘POST’, either. Since the opponent’s company is the largest mail operator in Germany, it is not surprising that a considerable part of the German-speaking public associate the word ‘POST’ with the opponent’s company name, Deutsche Post AG. Also the scholarly article of Dr. Buescher (Annex 9) recognises that the degree of market acceptance required for distinctiveness through use can be assumed to be significantly higher than 50 % for descriptive marks. In the view of the Opposition Division, the result of 63.8 % cannot be considered to be significantly higher than 50 % and, thus, even if the threshold necessary for an inherently descriptive sign in order to meet the minimum degree of distinctiveness to be registered is reached, this cannot be considered sufficient to prove enhanced distinctiveness.
It is to be noted that the results of the survey of 2015 confirm the tendency that consumers are nowadays less likely to connect one particular undertaking with the term ‘POST’: in 2000 and 2002 77.6% and 70.6% of the interviewees related the term ‘POST’ to the opponent’s services, while in 2015 only 63.8% of the interviewees perceive it as an indication of the opponent’s services. This is a clear drop of the percentage in relation to the numbers of the surveys of 2000 and 2002 and confirms that the term ‘POST’ will not anymore be exclusively linked with a sole undertaking.
Use as part of another trade mark
The opponent, furthermore, argues that the increased distinctiveness of the sign ‘POST’ also proceeds from its use as part of another trade mark, namely ‘Deutsche Post’. It is true that use of a trade mark as part of another trade mark may constitute use of the former. Yet, this does not apply automatically to every single case. It is not applicable to the present one due to the various meanings of the term ‘POST’, the decrease of the reputation of the sign ‘Deutsche Post’ in the trade mark rankings, the decrease of the public, that associates the term ‘POST’ in connection with the delivery of mail and letters with the opponent. Furthermore, even if the sign ‘POST’ acquired distinctiveness to serve as an indication of origin for the provision of postal services, its descriptive nature in relation to the subject matter of the services is out of the question (26/04/2017, B 2 667 726 POST/posta plus). Therefore, the scope of protection of the term ‘POST’ has to be assessed very narrowly.
Considering all the foregoing, the fact remains, however, that the word ‘POST’ per se is devoid of distinctive character in respect of the earlier postal and related services. It is considered that the evidence is sufficient to conclude that the degree of distinctiveness of the earlier mark acquired through use and recognition as stipulated under Section 8(3) of German trade mark law (Verkehrsgeltung) reaches the minimum level for it to be registered. That does not, however, prejudice the finding of the Opposition Division in the particular case in question that the distinctiveness of the earlier mark, ‘POST’, must be seen as low in the current examination.
- Global assessment, other arguments and conclusion
The goods and services of the opposing marks have been deemed to be identical. The distinctiveness of the earlier sign is minimal.
In the present case, the signs have been found to be visually and aurally similar to a low degree owing to the word that they have in common, namely ‘POST’. When consideration is given to the goods and services in question and the market reality in the sector of postal services, it is clear that the similarities between the signs in dispute relate to an element that is descriptive for the relevant goods and services. The contested mark will be perceived very likely perceived as a combination of the words ‘NEO’ and ‘POST’; the prefix ‘NEO’ adds different meaning to the word ‘post’ in the contested sign to a meaning that prevents the term ‘POST’ from being perceived as a reference to the opponent. The contested international registration contains a distinctive figurative element. Furthermore, the green colour of the contested mark helps even more to differentiate the signs. Overall, the dissimilarities outweigh the similarities.
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 insofar as it is based on Article 8(1)(b) EUTMR.
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 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.
- 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.
- Reputation of the earlier trade mark
The evidence submitted by the opponent to prove the reputation/high distinctive character of the earlier trade mark 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.
- The ‘link’ between the signs
As seen above, the earlier mark is reputed and the signs are similar to some extent, namely that they contain the word ‘POST’. 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.
Family of marks
The existence of a family of marks is a further relevant factor to be considered in the assessment of the existence of a link. The opponent’s puts forward that the earlier marks invoked in this proceedings form part of a ‘family of marks’ or ‘marks in a series’, all characterised by the presence of the same word component ‘POST. It invokes other marks such as ‘E-POST’, E POSTBRIEF’ as part of this series (see also Annex 19). In its view, such a circumstance is liable to give rise to a link 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.
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’ an association may be created between the contested trade mark and the earlier marks forming part of the series. According to one of the necessary conditions, the trade mark applied for must not only be similar to the marks belonging to the series, but also display characteristics capable of associating it with the series.
This could not be the case where, the element common to the earlier series of marks is used in the contested trade mark with a different semantic content or is non-distinctive for the relevant services.
In the present case, the word ‘POST’ in the contested mark will be understood with the meaning of mail or delivery, while the earlier mark will be perceived with any of its possible meanings.
The element ‘POST’ in the contested mark has a limited distinctiveness and cannot serve to link it with the claimed family of marks of the opponent (13/05/2015, T-102/14, ‘TGP Post’, EU:T:2015:279, § 72).
Other criteria for a link
Whereas the word ‘POST’ has several meanings in German, only one of them refers to a particular undertaking. The prefix ‘NEO’ changes the possible meaning of the contested sign to a meaning that prevents the term ‘POST’ from being perceived as a reference to the opponent. The contested International Registration contains a distinctive figurative element, while the verbal element ‘NEO’ is weak and the verbal element ‘POST’ is descriptive. Furthermore, the contested mark is presented in a green colour, whereas the majority of the earlier marks cited as a part of the family of marks by the opponent are presented in black and yellow colour.
The term ‘POST’ was registered as a trade mark in Germany only because it had just reached the minimum threshold for distinctiveness acquired through use. The German courts already considered the earlier mark’s scope of protection to be rather narrow, and its strength of prohibiting the use of other rights to be limited. Taking into consideration that the contested mark contains several additional elements, one of them being considerably more distinctive than the common non distinctive word ‘POST’, this goes beyond the scope of protection of the earlier mark.
Furthermore, due to the major changes in the market situation, the strong association of the term ‘POST’ with the opponent’s undertaking, which is reflected in the surveys, has decreased and the distinctiveness of the earlier mark at the time of the opposition proceedings is considered to be low.
Owing to the fact that the opponent’s predecessor had enjoyed a monopoly in the German market for many years, it is reasonable to assume that the public naturally perceives the generic term ‘POST’ in relation to postal services. Although the recognition of the mark cannot be questioned as such, this does not mean that the trade mark on its own is able to serve as an indicator of a unique origin if contained in/incorporated into another trade mark with a different overall appearance, pronunciation and concept. The generic word ‘POST’ directly describes the services at issue, as it serves as an everyday term for naming them. The term ‘POST’ is perceived by the relevant public not only as a concrete undertaking, but also as a term that indicates the services in question, that is to say, the term may be used also without any relation to the opponent’s trade mark.
Bearing in mind the meaning attributed to the contested sign as a whole and its distinctive elements, the per se non-distinctive character of the word ‘post’, and the market situation, which has diminished the connection that consumers could make between the term ‘POST’ and the opponent’s undertaking, the similarities between the contested trade mark and the earlier mark are unlikely to bring the earlier trade mark to the mind of the average consumer.
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) CTMR and must be rejected.
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
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.