NEXBOX | Decision 2696410 – MICROSOFT CORPORATION v. Shenzhen CYX Technology Co., Ltd.

OPPOSITION No B 2 696 410

Microsoft Corporation, One Microsoft Way, Redmond, Washington 98052-6399, United States of America (opponent), represented by Redd Solicitors LLP, 22 Tudor Street, London EC4Y 0AY, United Kingdom (professional representative)

a g a i n s t

Shenzhen CYX Technology Co., Ltd., A, 2/F, Bldg. 6, Guifa Industrial Park, Jianshe Rd., Longsheng Community, Dalang St., Longhua New Dist., Shenzhen, People’s Republic of China (applicant), represented by José Izquierdo Faces, Iparraguirre, 42 – 3º izda, 48011 Bilbao (Vizcaya), Spain (professional representative).

On 25/04/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 696 410 is partially upheld, namely for the following contested goods and services:

Class 9: Computer peripheral devices; Data processing apparatus; Electronic agendas; Punched card office machines; Audio- and video-receivers; Set-top boxes; Network communication apparatus; Chargers for electric batteries; Camcorders; Portable media players; Computers; Batteries, electric.

Class 38: Radio broadcasting; Television broadcasting; Cable television broadcasting; Wireless broadcasting; Message sending; Transmission of telegrams; Telephone services; Communications by telephone; Telex services; Cellular telephone communication; Communications by computer terminals; Computer aided transmission of messages and images; Providing access to databases; Voice mail services; Transmission of greeting cards online; Transmission of digital files; Videoconferencing services; Providing online forums.

Class 42: Computer rental; Computer programming; Computer software design; Updating of computer software; Consultancy in the design and development of computer hardware; Rental of computer software; Recovery of computer data; Maintenance of computer software; Conversion of data or documents from physical to electronic media; Creating and maintaining web sites for others; Hosting computer sites [web sites]; Installation of computer software; Data conversion of computer programs and data [not physical conversion]; Computer software consultancy; Monitoring of computer systems by remote access; Web site design consultancy; Software as a service [SaaS]; Information technology [IT] consultancy; Server hosting.

2. European Union trade mark application No 15 053 846 is rejected for all the above goods and services. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 053 846. The opposition is based on, inter alia, European Union trade mark registrations No 1 611 235, 2 866 143, 1 747 609 and 4 437 083 and the non-registered trade mark XBOX. The opponent invoked Articles 8(1)(b), 8(5) and 8(4) EUTMR.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registrations No 1 611 235, 1 747 609 and 4 437 083.

The goods and services

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

EUTM XBOX (Registration number 1 611 235)

Class 9: Video game players; electronic devices for accessing global computer and communication networks; computer hardware and peripherals; keyboards, joysticks, pointing devices; computer software for playing video games and for accessing and browsing global computer and communication networks; computer software for compressing and decompressing data and video images, word text editing, and email; operating system software and utilities.

EUTM XBOX (Registration number 1 747 609)

Class 41: Entertainment services, namely, providing interactive multiplayer game services for games played over computer networks and global communications networks; electronic message and chat services for use in connection with interactive games played over computer networks and global communications networks; providing computer games and video games that can be accessed, played and downloaded over computer networks and global communications networks; and providing information on the video game and computer game industries, general video game and computer game information, and providing information on computer games, video games and related products.

EUTM XBOX 360 (Registration number 4 437 083)

Class 38: Communication services, namely, electronic transmission of data and documents among users of computers; electronic mail services; web messaging services; paging services; streaming of audio and video material on the Internet; wireless voice mail services; voice-activated dialing services; and providing wireless access to computer networks and Internet.

The contested goods and services are the following:

Class 9: Computer peripheral devices; Data processing apparatus; Electronic agendas; Punched card office machines; Audio- and video-receivers; Cabinets for loudspeakers; Stands for photographic apparatus; Set-top boxes; Electrical inductors; Electrical distribution boxes; Electric cables; Network communication apparatus; Plugs, sockets and other contacts [electric connections]; Wire connectors [electricity]; Chargers for electric batteries; Camcorders; Portable media players; Computers; Batteries, electric; Blank integrated circuit cards [blank smart cards].

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

The term ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

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 goods in Class 9

The contested computer peripheral devices are identical to the goods computer peripherals of earlier mark number 1.

The contested set-top boxes are electronic boxes that generally contain a TV-tuner input and display output to a television set and an external source of signal. The opponent’s video game players may also provide such a TV input and maybe connected to each other and to TVs. They are available through the same distribution channels and can be directed at the same public. For these reasons they are considered to be lowly similar.

The contested goods electronic agendas are similar to the opponent’s goods computer software for compressing and decompressing data and video images, word text editing, and email as these electronic agendas also include software to compress and decompress data. They are directed at the same consumers and are also complementary. Further, they are distributed via the same channels.

The contested data processing apparatus include as a broader category the opponent’s computer hardware and are therefore identical.

The contested portable media players and overlap with the opponent’s video game players as the opponent’s goods can also be used to play media and to receive audio and video while the main purpose is to play games. They are therefore considered to be identical.

The contested audio- and video-receivers are lowly similar to the opponent’s electronic devices for accessing global computer and communication networks as they can coincide in producers, end-user and distribution channels.

The contested network communication apparatus are identical to the opponent’s electronic devices for accessing global computer and communication networks, despite using a slightly different wording.

The contested computers include as a broader category the opponent’s computer hardware and are therefore identical.

The contested punched card office machines refer to a technology which became already outdated in the 1970s and which were used to store data. While punched card systems are still used to record votes, for example in the US voting system, they are no longer used in offices. If they were still used for example inside museums to show how data was stored half a century ago, they might have been considered to be similar to the opponent’s computer hardware as these electronic devices are used to store data as well. They were directed at the same public and were in competition. For these reasons, they would be similar if they still existed in the market.

The contested batteries, electric; chargers for electric batteries are lowly similar to the opponent’s video game players as they can coincide in distribution channels, end-consumer and can be complementary.

The contested camcorders are at least similar to the opponent’s computer hardware and peripherals as the opponent’s goods include peripheral devices such webcams which can be used interchangeably with the contested camcorders. The goods coincide in their purpose and method of use. Further, they are distributed via the same channels, may coincide in producers and target the same public.

However, the contested cabinets for loudspeakers; stands for photographic apparatus; electrical inductors; electrical distribution boxes; electric cables; plugs, sockets and other contacts [electric connections]; wire connectors [electricity]; blank integrated circuit cards [blank smart cards] are dissimilar to all earlier goods and services. These goods are neither in competition nor complementary to the opponent’s goods and services in Classes 9, 38 and 41. Likewise, they also do not share the same producers and consumers.

Contested services in Class 38

The contested radio broadcasting; television broadcasting; cable television broadcasting; wireless broadcasting overlap with the opponent’s services streaming of audio and video material on the internet and are therefore identical.

The contested computer aided transmission of messages and images are identical to the opponent’s electronic mail services as electronic mail services obviously also can include the transmission of messages and images.

The contested communications by computer terminals are identical to the opponent’s communication services, namely, electronic transmission of data and documents among users of computers besides using a slightly different wording.

The contested services providing access to databases are highly similar to the opponent’s communication services, namely, electronic transmission of data and documents among users of computers as these services are being provided by the same companies, are offered through identical distribution channels and are directed at the same consumers; further these services are also complementary.

The contested providing online forums are similar to the opponent’s services electronic message and chat services for use in connection with interactive games played over computer networks and global communications networks in Class 41 as they can be provided by the same companies through the same distribution channels to the same consumers.

The contested videoconferencing services are similar to the opponent’s electronic mail services as they can be provided by the same companies, are directed at the same consumers and are available through the same distribution channels.

The contested voice mail services include as a broader category the opponent’s wireless voice mail services and are therefore identical.

The contested cellular telephone communication services overlap with the opponent’s wireless voice mail services as cellular telephone communication may also include voice mail services but not all voice mail services are provided through mobile phones. The services are therefore identical.

The contested transmission of telegrams; telex services are similar to the opponent’s electronic mail services. They have the same purpose, are in competition to each other and are directed at the same consumers.

The contested services message sending include, as a broader category, the opponent’s web messaging services and are therefore identical.

The contested transmission of greeting cards online; transmission of digital files are included in the broader category of the opponent’s communication services, namely, electronic transmission of data and documents among users of computers and are therefore identical.

The contested telephone services; communications by telephone include as a broader category the opponent’s wireless voice mail services and are therefore identical.

Contested services in Class 42

The contested services computer rental are similar to the opponent’s computer hardware in Class 9 as they can coincide in end user, distribution channels and are in competition to each other.

The contested maintenance of computer software; updating of computer software; installation of computer software are similar to the opponent’s computer software for playing video games and for accessing and browsing global computer and communication networks as they can coincide in producer, end user and distribution channels.

The contested computer programming; computer software design; rental of computer software are similar to the opponent’s computer software for playing video games and for accessing and browsing global computer and communication networks as they can coincide in producer and end user. Furthermore they are complementary.

The contested software as a service [SaaS] is a way of delivering software over the Internet, as a service. Instead of installing and maintaining software, the customers simply access it via the Internet, freeing themselves from complex software and hardware management. Therefore, software as a service is essentially web-based or hosted software run on the SaaS provider’s servers to which the customers are given access by paying a subscription fee. Although the nature of software and software as a service [SaaS] is not the same, they can share the same purpose and be in competition; they can share the same relevant public and can often coincide in the same usual producers and providers of such goods and services. Therefore, these contested services are at least similar to the opponent’s computer software for playing video games and for accessing and browsing global computer and communication networks in Class 9.

The contested creating and maintaining web sites for others; hosting computer sites [web sites]; computer software consultancy; monitoring of computer systems by remote access; web site design consultancy; information technology [IT] consultancy; server hosting are similar to the opponent’s computer software for playing video games and for accessing and browsing global computer and communication networks as they can coincide in producer and end user. Furthermore they are complementary.

The contested consultancy in the design and development of computer hardware are similar to the opponent’s computer hardware networks as they can coincide in producer and end user. Furthermore they are complementary.

The contested recovery of computer data; conversion of data or documents from physical to electronic media; data conversion of computer programs and data [not physical conversion] are similar to the opponent’s computer software for compressing and decompressing data and video images, word text editing, and email as they can coincide in producer and end user. Furthermore they are complementary.

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 found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high. This is due to the fact that some of the contested goods and services such as Computer software consultancy or Network communication apparatus can be very expensive purchases and may require a deep understanding of the potential costs and expenses.

The signs

Marks 1 and 2): XBOX

Mark 3: XBOX 360

Earlier trade marks

Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The element ‘BOX’ included in both signs will be understood by a majority of the relevant public, e.g. the German- and English-speaking public, due to the existence of this word in the respective languages, as a container. For some of the goods, namely computers, software and other electronic equipment which could be in the form of a box or offered in a box, this element is considered to be non-distinctive. In other languages, for example the Spanish and Bulgarian-speaking parts, this element has no meaning and it is unlikely that the consumer will split the marks.

The element ‘360’ of the earlier sign No 3 will be associated with 360 degrees and it is commonly used in trade to refer to a product or service which is complete, just like a circle is complete which also has 360 degrees. This element is considered to be non-distinctive in all languages and for all relevant goods and services.

As regards the contested sign, it is composed of a distinctive verbal element and a less distinctive figurative element, namely the stylisation next to the initial letter “N” which is of a purely decorative nature. Therefore, the verbal element is more distinctive than the figurative element.

Visually, the signs coincide in the letters ‘XBOX’, while they differ in the slight stylisation of these letters in the contested sign and in the letters “NE” in the contested sign as well as in the non-distinctive numerical element “360” in the earlier sign No 3.

Therefore, the signs are similar to an average degree at least for that part of the public for which the verbal element “BOX” is fully distinctive. The same applies with regard to those services for which the element “BOX” in any case is not lacking distinctiveness. For another part of the public, who understands the word “BOX” and in relation to those goods in Class 9 for which this verbal element is lacking distinctiveness, the signs are only visually lowly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛XBOX’, present identically in both signs. For example in the English language, the earlier marks No 1 and 2 will be pronounced “EX-BOX” while the contested sign will be pronounced “NEX-BOX”. For that part of the public which pronounces a single letter “X” as “EX”, the signs are aurally highly similar, as they only differ in the initial letter “N” of the contested sign. In other languages, for example in German, the earlier mark’s verbal element will be pronounced “IKS-BOX”; for that part of the public the signs are aurally only similar to an average degree. It also has to be taken into account that at least for that part of the public for which the verbal element “BOX” is fully distinctive the signs are aurally highly similar. The same applies with regard to those services for which the element “BOX” in any case is not lacking distinctiveness. For another part of the public, who understands the word “BOX” and in relation to those goods in Class 9 for which this verbal element is lacking distinctiveness, the signs are only aurally lowly similar. With the numerical element 360 being non-distinctive, it is unlikely to be pronounced.

Conceptually, neither of the signs has a meaning as a whole. For part of the public, the coinciding word ‘BOX’ will evoke a concept. For that part it is not sufficient to establish any conceptual similarity, as this element is non-distinctive for parts of the relevant goods and cannot indicate the commercial origin of any of the marks. The attention of the relevant public will be attracted by the additional fanciful verbal elements, which have no meaning. For another part of the public, only the non-distinctive numerical element “360” included in the earlier mark 3 evokes a concept. With the numerical element 360 being non-distinctive, it is unlikely to be taken into account conceptually.

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

Distinctiveness of the earlier marks

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

According to the opponent, the earlier marks have been extensively used and enjoy an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of some non-distinctive elements in the marks as stated above in section c) of this decision.

Global assessment, other arguments and conclusion

The goods and services are partially identical, partially similar (to various degrees) and partially dissimilar. The signs have been extensively discussed above.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). While it is true that for part of the public the verbal element “BOX” is considered to be non-distinctive (at least for the goods in Class 9 which were found to be identical or similar), for another part of the public this is not the case and in relation to the services, this element is not lacking distinctiveness in any case. Further, even for that part of the public for whom “BOX” is non-distinctive, for example the English-speaking parts of the public, there is still likelihood of confusion in relation to the goods in Class 9 as aurally the signs are highly similar and only differ in the initial letter ‘N’, which in certain contexts will be almost impossible to be distinguished as the opponent quite rightly expressed: I would like an XBOX versus I would like a Nexbox.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registrations.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade marks. This also applies to the goods which were found to be only lowly similar as the signs for some parts of the public are aurally highly similar while for others they are still similar to an average degree.

The rest of the contested goods are dissimilar. As similarity of goods is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their reputation as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing marks in relation to dissimilar goods, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

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

EUTM XBOX LIVE (Registration number 2 866 143) for goods in Class 9

EUTM XBOX NOW (Registration number 11 304 573) for services in Class 38

Since these marks cover the same or a narrower scope of goods and services, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

The Opposition Division will therefore continue the examination of the opposition in relation to the remaining contested goods (cabinets for loudspeakers; stands for photographic apparatus; electrical inductors; electrical distribution boxes; electric cables; plugs, sockets and other contacts [electric connections]; wire connectors [electricity]; blank integrated circuit cards [blank smart cards]) first in relation to Article 8(4) EUTMR.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

The opponent based its opposition on the earlier non-registered mark XBOX in the United Kingdom for the following goods and services:

Video game players; electronic devices for accessing global computer and communication networks; computer hardware and peripherals; computer software. Entertainment services including multiplayer game services; electronic message and chat services; providing computer games and video games; providing information on the video game and computer game industries, general video game and computer game information, and providing information on computer games, video games and related products; devices used to facilitate interactive game play over computer networks. Communication services, namely, electronic transmission of data and documents among users of computers; electronic mail services; web messaging services; streaming of audio and video material on the Internet; wireless voice mail services. Audio, video and multimedia broadcasting via the internet.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

Passing off (non-registered trade mark under the laws of the United Kingdom)

The opposition is based on a non-registered trade mark used in the United Kingdom. The opponent claims to have the right to prohibit the use of the contested trade mark under the tort of passing off.

A successful claim for passing off must satisfy three cumulative conditions. Failure to satisfy any one of them means that the claim cannot succeed. The conditions are:

Firstly, the opponent must prove that it enjoys goodwill or is known for specific goods and services under its mark. The evidence must show that the opponent’s mark is recognised by the public as distinctive for the opponent’s goods and services. For the purposes of opposition proceedings, goodwill must be proven to have existed before the filing date of the contested trade mark.

Secondly, the opponent must demonstrate that the [applicant][holder]’s mark would be likely to lead the public to believe that the [applicant][holder]’s goods and services originate from the opponent. In other words, the public would be likely to believe that goods and services put on the market under the contested trade mark are actually those of the opponent.

Thirdly, the opponent must show that it is likely to suffer damage as a result of the applicant’s use of the contested trade mark.

The opponent’s right vis-à-vis the contested trade mark

Misrepresentation (passing off)

The opponent must demonstrate that the applicant’s mark would be likely to lead the public to believe that the applicant’s goods and services originate from the opponent

Therefore, a comparison of the signs is required. The signs were already compared under Article 8(1)(b) EUTMR.

Furthermore, the public is unlikely to be misled where the contested goods are dissimilar to the goods and services upon which the opponent’s goodwill has been built. Therefore, the contested goods must be compared to the goods and services for which the opponent has shown that it has acquired goodwill through use.

1. The goods and services

The opposition is still directed against the remaining contested goods of the contested trade mark:

Class 9: Cabinets for loudspeakers; Stands for photographic apparatus; Electrical inductors; Electrical distribution boxes; Electric cables; Plugs, sockets and other contacts [electric connections]; Wire connectors [electricity]; Blank integrated circuit cards [blank smart cards].

The opponent claims that it has acquired goodwill through use of its non-registered trade mark for the following goods and services: Video game players; electronic devices for accessing global computer and communication networks; computer hardware and peripherals; computer software. Entertainment services including multiplayer game services; electronic message and chat services; providing computer games and video games; providing information on the video game and computer game industries, general video game and computer game information, and providing information on computer games, video games and related products; devices used to facilitate interactive game play over computer networks. Communication services, namely, electronic transmission of data and documents among users of computers; electronic mail services; web messaging services; streaming of audio and video material on the Internet; wireless voice mail services. Audio, video and multimedia broadcasting via the internet.

The goods and services have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings.

It follows from the above that the remaining contested goods are dissimilar to the goods and services for which the opponent has claimed that it has acquired goodwill through use. Under these circumstances, the Opposition Division finds it unlikely that the opponent’s customers would mistake the applicant’s goods for those of the opponent even if the signs have some similarities. Therefore, the opposition is not well founded under Article 8(4) EUTMR.

The Opposition Division will therefore continue the examination of the opposition in relation to the remaining contested goods in relation to the last remaining ground of opposition, 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 applicant establishes due cause for the use of the contested trade mark.

Reputation of the earlier trade marks

According to the opponent, the earlier trade marks mentioned below had a reputation in the European Union for the goods and services mentioned below each registration. The opponent claims in its submissions that all its earlier marks are reputed, however in the notice of opposition only claims the four earlier rights mentioned below as being reputed. As reputation has to be claimed during the opposition period as it is a ground on its own, namely Article 8.5 EUTMR, the claim of reputation for the fifth mark, namely EUTM XBOX NOW (Registration number 11 304 573) cannot be assessed.

EUTM XBOX (Registration number 1 611 235)

EUTM XBOX (Registration number 1 747 609)

EUTM XBOX LIVE (Registration number 2 866 143)

Class 9: electronic devices for use with online computer game and video game services; devices used to facilitate interactive game play over computer networks.

EUTM XBOX 360 (Registration number 4 437 083)

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

In the present case the contested trade mark was filed on 29/01/2016. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 14/09/2016 the opponent submitted the following evidence:

A witness statement signed by Jenifer deWolf Paine (attorney at Microsoft corporation) which gives information about global sales figures for the XBOX as well as detailed information on all the following exhibits mentioned in the statement:
Exhibit JWP1: timeline of key events in Microsoft’s history
Exhibit JWP2: Microsoft ranked second in the Forbes List of most powerful brands
Exhibit JWP3: Microsoft ranked fifth in the Interbrand List of best global brands
Exhibit JWP4: screenshots showing the use of contested mark on the internet
Exhibit JWP5: Whois search of the applicant’s business address
Exhibit JWP6: selection of websites showing that the applicant’s goods can be purchased via a variety of online retailers like amazon or ebay
Exhibit JWP7: overview of different Windows and Office logos
Exhibit JWP8: images of products of the applicant showing that the applicant uses the opponent’s company and windows logo on its products
Exhibit JWP9: online listings of the applicant’s goods, directed at the consumers in the United Kingdom, France and Germany
Exhibit JWP10: a selection of newspaper articles referring to the launch (events) of the XBOX in the United Kingdom and Germany in 2002
Exhibit JWP11: a selection of newspaper articles referring to the launch (events) of the XBOX LIVE in the European Union in 2003
Exhibit JWP12: a selection of newspaper articles referring to the launch (events) of the XBOX 360 in the European Union in 2005
Exhibit JWP13: a selection of newspaper articles referring to the launch of the XBOX One in the European Union in 2013
Exhibit JWP14: Announcement by Microsoft that the production of XBOX 360 would cease
Exhibit JWP15: a selection of current and historical screenshots from the opponent’s and retailers’ websites in Germany, France and the United Kingdom showing the XBOX products
Exhibit JWP16: a selection of website screenshots showing different accessories for use with XBOX consoles
Exhibit JWP17: a selection of website screenshots showing that the XBOX can also be used to access live TV content
Exhibit JWP18: a selection of software applications which are available for the different models of XBOX
Exhibit JWP19: a selection of website screenshots showing that users can communicate and play with each other through the XBOX
Exhibit JWP20: a selection of website screenshots showing different kinds of XBOX gaming software
Exhibit JWP21: documents and screenshots in relation to the “official XBOX magazine”. These figures refer to the year 2007.
Exhibit JWP22: data from the website hypestat.com offering information on the visits to the website which show that millions of users from EU countries have visited the website xbox.com
Exhibit JWP23: information about Xbox apps and user reviews about the app
Exhibit JWP24: information about the subscriber number to the XBOX LIVE service which amount to millions of users in the years 2013-2016. Even though the top cities are mentioned which have the highest number of XBOX-subscribers, there is no information about the subscriber numbers per specific country.
Exhibit JWP25: information about advertising campaigns in relation to the launch of the XBOX in 2002 in the European Union reaching millions of consumers in the European Union
Exhibit JWP26: publications with information about industry and marketing awards given to the opponent mostly for the advertising campaigns in the years 2012 until 2016
Exhibit JWP27: a list of the opponent’s trade mark applications and registrations around the European Union
Exhibit JWP28: A copy of Opposition decision B 948 259 by the EUIPO from the year 2008
Exhibit JWP29: a decision by the French courts in an invalidity case issued in the year 2007 that XBOX had reputation for goods in Class 9 and a translation thereof
Exhibit JWP30: a summary of Microsoft enforcement activities related to trade marks and domains around the European Union
The opponent further claims that millions of units were sold in the years 2012-2015, without specifying in which territory.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired reputation.

Reputation requires recognition of the mark by a significant part of the relevant public. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 22).

Furthermore, it must be recalled that, as follows from Article 76(1) EUTMR, in inter partes proceedings the Office is restricted in its examination to the acts, evidence and arguments submitted by the parties. Therefore, in assessing whether the earlier mark enjoys reputation, the Office may neither take into account facts known to it as a result of its own private knowledge of the market, nor conduct an ex officio investigation, but should base its findings exclusively on the information and evidence submitted by the opponent. The evidence must be clear, convincing and ultimately reveal facts necessary to safely conclude that the mark is known by a significant part of the public (decision of the Boards of Appeal of 06/11/2014, R 0437/2014-1, SALSA/SALSA (fig.) et al.).

The evidence shows serious use of the trade marks but does not provide sufficient indication of the extent of recognition by the relevant public. The evidence concerning sales figures and advertising costs is not put into the context of the market and competitors in question. Most of the evidence emanates from the opponent. A big part of the evidence relates to a period of time which is about 10 years (or more) before the filing of the contested mark. Even though the Exhibits JWP24 – 26 and JWP13 contain a lot of information and references to the “flagship games console brand”, to the “biggest ever massive ad launch”, there is little evidence on specific numbers and comparing these numbers to the specific market in a specific country within the European Union. The newspaper articles could provide important pieces of information, however in the present case, the articles only refer to the amount of products sold and that the consumers were awaiting the launch of the new products. They provide no information from which the Opposition Division could conclude that the marks had acquired reputation.

Moreover, the fact that the earlier marks ‘NEXBOX’ are mentioned in various magazines and newspapers dated in the early 2000’s does not indicate that they were also known at the filing date of the contested sign by a significant part of the relevant. It cannot be excluded that the recognition of the marks 'NEXBOX', assuming it ever existed, was lost over the years.

With regard to this the Opposition Division notes that the opponent must demonstrate that the earlier mark had a reputation at the filing date of the contested EUTM application or at priority date. In the present case, many articles are dated and/or refer to a time period (from 2000 until 2005), that is quite far apart from the relevant priority date 29/01/2016 of the contested sign and the relevance of this evidence is therefore reduced.

Further, other evidence which could otherwise be helpful, such as the Forbes list of the most successful trade marks in the world, does not show that the trade marks have a reputation for the relevant products, because the evidence relates to the opponent as a company or group or to different marks and not to the trade marks in question.

Under these circumstances and in the absence of any independent and objective evidence that would enable the Opposition Division to draw solid conclusions about the degree of recognition of the earlier marks by the relevant public at the relevant date, the market share held by the marks, the position they occupy in the market in relation to competitors’ services, the duration, extent and geographical area of their use or the extent to which they have been promoted, it is concluded that the evidence does not show the degree of recognition of the trade marks by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade marks have reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade marks have a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Swetlana BRAUN

Lars HELBERT

Denitza STOYANOVA-VALCHANOVA

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.

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