OPPOSITION No B 2 461 427

Olympique de Marseille SASP, La Commanderie 33, Traverse de la Martine, 13012 Marseille, France (opponent), represented by Markplus International, 39 rue Fessart, 92100 Boulogne-Billancourt, France (professional representative)

a g a i n s t

Ja-maar B.V., Oudegracht 263, 3511 NM Utrecht; The Netherlands (applicant), represented by Center Tone Consultancy-International Trademark Protection, Hertzstraat 2, 2652 XX Berkel en Rodenrijs; The Netherlands (professional representative).

On 16/03/2017, the Opposition Division takes the following

DECISION:

1        Opposition No B 2 461 427 is partially upheld, namely for the following contested goods and services:

Class 16:         Printed matter; photographs; instructional and teaching material (except apparatus); aforementioned products not related to sports.

Class 28:         Games and playthings; aforementioned products not related to sports.

Class 41:         Education; providing of training; entertainment; sporting and cultural activities.

2        European Union trade mark application No 13 116 181 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

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 13 116 181. The opposition is based on:

• French trade mark registration No 8 3 573 710, ;
• French trade mark registration No 8 3 555 809 ‘OM’ (word mark);

The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

The opposition is based on:

• French trade mark registration No 13 3 983 943, ;

The opponent invoked Article 8(1)(b) EUTMR.

The opposition is also based on:

• trade name ‘OM’, used in the field of sports and football clubs and related goods and services;
• domain name ‘OM.NET’, used in the field of printed matter and the like, games and sport and leisure goods, advertising, education, training, entertainment, and activities in the fields of sport and culture.

The opponent invoked Article 8(4) EUTMR.

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

On 07/01/2015, the opponent filed a notice of opposition in which it clearly invoked Article 8(4) EUTMR in respect of the following earlier signs used in the course of trade:

• trade name ‘OM’, used in the field of sports and football clubs and related goods and services;

• domain name ‘OM.NET’, used in the field of printed matter and the like, games and sport and leisure goods, advertising, education, training, entertainment, and activities in the fields of sport and culture.

The contested European Union trade mark application was published on 07/10/2014. The opposition period set by Article 41(1) EUTMR as three months following the publication of the EU trade mark application expired on 07/01/2015.

According to Rule 15(2)(b) EUTMIR, the notice of opposition shall contain a clear identification of the earlier mark or earlier right on which the opposition is based, namely:

iii) where the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, an indication of its kind or nature, a representation of the earlier right, and an indication of whether this earlier right exists in the whole Union or in one or more Member States, and if so, an indication of the Member States.

According to Rule 17(2) EUTMIR, if the notice of opposition does not clearly identify the earlier mark or the earlier right on which the opposition is based in accordance with Rule 15(2)(b) EUTMIR, and if the deficiency has not been remedied before the expiry of the opposition period, the Office shall reject the opposition as inadmissible.

On 07/01/2015, the opponent filed notice of opposition against the contested application. However, the opponent failed to indicate the Member State(s) in which the earlier signs are used in the course of trade within the meaning of Article 8(4) EUTMR.

The opponent, in its observations of 10/11/2015, claimed that the use of these earlier signs was throughout French territory and invoked the French right. However, these claims were made after the end of the opposition period.

Therefore, the abovementioned rights cannot be taken into account as bases of the opposition, as the territory had not been claimed before the expiry of the opposition period on 07/01/2015.

For the sake of completeness, this is in line with the Office’s practice, established in Communication No 5/7 of 12/09/2007 of the President of the Office, according to which, where an opposition is based on several earlier rights, the examination of admissibility is carried out only in relation to one earlier right, which in this case is earlier French registration No 8 3 573 710 for the figurative mark .

Considering the above, the Opposition Division will base its examination of the opposition on the French trade mark registrations that have been correctly identified and substantiated.

PRELIMINARY REMARK ON THE PROOF OF USE REQUEST

Pursuant to Rule 22(1) EUTMIR, the request for proof of use pursuant to Article 42(2) EUTMR will be admissible only if the applicant submits such a request within the period specified by the Office. The request for proof of use must be made within the first time limit for the applicant to reply to the opposition under Rule 20(2) EUTMIR.

On 05/05/2015, the Office gave the applicant until 10/11/2015 to submit its observations in reply. This time limit was extended until 10/01/2016. On 06/01/2016, within the time limit, the applicant requested that the opponent submit proof of use of the French trade mark No 8 3 573 710  only.

On 02/08/2016, the applicant also requested proof of use of earlier French trade mark No 8 3 555 809 for the word mark ‘OM’, subject to use. However, that request was not made within the first time limit and, therefore, the request is not admissible.

The Opposition Division will first examine the opposition in relation to earlier French trade mark No 8 3 555 809 for the word mark ‘OM’.

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

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

1. The goods and services

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

Class 24:        Textiles; bed and table covers; fabrics for textile use; elastic fabrics; velvet; bed linen; linen; not of paper tablecloths; bath linen (except clothing);

Class 25:        Clothing, footwear, headgear; shirts; leather or imitation leather clothing; belt (clothing); furs (clothing); gloves (clothing); scarves; ties; hosiery; socks; slippers; beach shoes, skiing or sports; diapers of textile; underwear;

Class 41:        Education; training; entertainment; sporting and cultural activities; information relating to entertainment or education; recreational services; publication of books; book loans; animal training; production of films on videotape; rental of motion pictures; rental of sound recordings; rental of video and radio and television stations; rental of show scenery; videotape editing; photography services; organization of competitions (education or entertainment); organization and conducting of colloquiums, conferences or congresses; organization of exhibitions for cultural or educational purposes; reservations of seats for shows; game services provided on-line from a computer network; service of gambling; publication of electronic books and journals on-line; electronic desktop publishing;

Following a limitation submitted by the applicant, the contested goods and services are the following:

Class 16:         Paper, cardboard; printed matter; photographs; instructional and teaching material (except apparatus); aforementioned products not related to sports.

Class 28:         Games and playthings; aforementioned products not related to sports.

Class 35:         Advertising; business management; business administration; office functions.

Class 41:         Education; providing of training; entertainment; sporting and cultural activities.

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

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

Contested goods in Class 16

The contested printed matter; aforementioned products not related to sports are similar to the opponent’s publication of books, as they can have the same producers and distribution channels. Furthermore, they are complementary. Therefore, they are similar.

The contested photographs; aforementioned products not related to sports are essential to the opponent’s photography services and they are, therefore, complementary. They can have the same public and distribution channels. Therefore, they are similar.

The contested instructional and teaching material (except apparatus); aforementioned products not related to sports are essential to the opponent’s education services and they are, therefore, complementary. This is because, in order to supply education services, it is both helpful and usual to use these goods. Service providers offering any kind of course often hand out these goods to participants as learning support. Given the close link between the goods and services in question as regards their relevant public and distribution channels, they are similar.

The contested paper, cardboard; aforementioned products not related to sports, which are an unprocessed or semi-processed material, are dissimilar to the opponent’s goods in Classes 24 and 25 (mainly textiles and textile covers for household purposes and clothes and footwear) and services in Class 41 (education, entertainment, and sporting and cultural activities). They have dissimilar natures, purposes and distribution channels. They are not complementary or in competition and they target different consumers.

Contested goods in Class 28

The contested games and playthings; aforementioned products not related to sports are mainly toys, games or other objects that a child plays with. The contested goods are complementary to the opponent’s entertainment; recreational services to some extent. Although they have different natures, these goods and services have the same purpose, that of providing amusement, and they can have the same consumers. They can have the same origins and distribution channels, since it is likely that producers will manufacture and sell a wide range of such products and provide a wide range of entertainment services. Therefore, they are similar to a low degree.

Contested services in Class 35

Advertising; business management; business administration; office functions are rendered by specialist companies, such as advertising establishments or business consultants. Advertising establishments undertake communication to the public and declarations or announcements by all means of dissemination concerning all kinds of goods or services. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share.

These services are not similar to the opponent’s goods in Classes 24 and 25, which include mainly textiles and textile covers for household use and certain clothing and footwear articles, respectively. Although the contested services can be rendered in relation to the opponent’s goods, this is not sufficient to render them similar, since they have different natures, purposes and distribution channels. They are not complementary or in competition and they target different consumers.

These services are not similar to the opponent’s services in Class 41, which consist in providing sporting and cultural activities, entertainment and education. They have different natures, purposes and providers. They do not target the same public (professionals versus the general public) and they are neither in competition nor complementary to each other. Although the contested services can be rendered in relation to sports, this is not sufficient to render them similar, since they clearly have different purposes and distribution channels. They are not complementary or in competition and they target different consumers.

Contested services in Class 41

Education; providing of training; entertainment; sporting and cultural activities are identically contained in both lists of services.

2. Relevant public — degree of attention

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

In the present case, the goods and services found to be identical or similar to varying degrees are directed at the public at large. The degree of attention is considered average.

3. The signs

OM
Earlier trade mark	Contested sign

The relevant territory is France.

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

The earlier mark is a word mark consisting of the two letters ‘OM’.

The contested mark is a figurative mark composed of the letters ‘OM’ in its upper part, with the verbal element ‘DENKEN’ depicted below in a mirror-image form that can be read when reflected in a mirror. These elements are on a red background.

The earlier mark contains no element that could be considered more distinctive or more dominant (visually eye-catching) than other elements.

The contested sign has no element that could be considered more dominant (visually eye-catching) than other elements.

The contested sign is composed of distinctive verbal elements and a less distinctive, figurative element that is purely decorative, namely the red square background. Therefore, the verbal elements are more distinctive than the figurative element.

Visually, the signs coincide in the letters ‘OM’, which comprise the entire earlier mark. They differ in the stylisation of the contested sign and in the depiction of the second verbal element. Although this element is distinctive and will have an impact on the consumer’s visual impression of the sign, it is not clearly legible at first glance and the letters ‘OM’ will have an independent distinctive character in the contested sign, forming part of a combination of a legible word and an illegible word.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛OM’, present in both signs. The additional verbal element in the contested sign is not likely to be pronounced by the relevant public, because it is less legible than the first element. Therefore, the signs are at least highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

4. Distinctiveness of the earlier mark

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

According to the opponent, the earlier mark has been extensively used and enjoys 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 mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has 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 mark must be seen as normal.

5. Global assessment, other arguments and conclusion

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).

In the present case, the contested goods are partly similar to varying degrees and the contested services are partly identical to the opponent’s goods and services. The relevant public’s degree of attention is average.

The signs under comparison are visually similar to an average degree and aurally similar to a high degree.

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. Article 8(1)(b) EUTMR states that, upon opposition, an EUTM application shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. In the present case, consumers may believe that the contested sign is a new version of the opponent’s mark ‘OM’ or that it designates a new line of goods and services originating from the same undertaking as goods and services sold under the earlier mark.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion in the form of a likelihood of association on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s French trade mark registration.

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

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/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 mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods and services, 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 mark enjoyed an enhanced degree of distinctiveness.

The Opposition Division will now examine the opposition in relation to earlier French registration trade mark No 13 3 983 943 for the figurative mark .

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

6. The goods and services

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

Class 16:         Printed matter; articles bindings; photographs; stationery; adhesives (glues) for stationery or household purposes; adhesives tapes for stationery or household purposes; self-adhesive tape for stationery or household purposes; stickers; adhesives tapes for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); teaching material (except apparatus); print; photographs; paper; cardboard; cardboard or paper; posters; albums; cards; books; books, newspapers; comic books; tickets; tickets; prospectus drawing pads; brochures, schedule; writing instruments; pencils, decals art tracing paper; catalog; drawing instruments; drawing supplies; erasers; wrapping paper; packaging cardboard or paper for bottles; ink pads; envelops; labels not of textile; invitations; sheets; paper handkerchiefs; paper towels; paper tablecloths; toilet paper; bags and sachets (envelopes, pouches) of paper or plastics for packaging; garbage bags of paper or plastic; figure (statue) paper mache; flyers, leaflets; gums for stationery or household purposes; graphics; images; books; manuals; writing cases; palettes for painters; pastel; modeling pastes; paint cans; photographs; stencils; printed publications; journals; pens; electrics and non electric pencil sharpeners; drawing sets; viscose sheets for packaging.

Class 25:         Clothing, footwear, headgear; shirts; leather or imitation leather clothing; belt (clothing); furs (clothing); gloves (clothing); scarves; ties; hosiery; socks; slippers; slippers; beach shoes, skiing or sports underwear; swimwear; caps; trunks; paper hats; studs for football shoes; made clothing; panties; scarves; stoles; football boots; babies; suits; pyjamas; briefs; t-shirts; knitwear; chlotes; clothing for gymnastics; cap peaks;

Class 38:         Telecommunications. Information on telecommunications; Mobile radio services; providing user access to global computer network ; provision of online forums; providing access to databases; electronic advertising (telecommunications); providing telecommunications connections to a global computer network; press and information agencies (news); rental of telecommunication devices; radio or television broadcasting services; teleconferences or videoconferences; email services; rental of access time to global computer networks; transmission line greeting cards; provision of discussion forums on the internet; provision of online forums; voice mail services; transmission of messages; message transmissions and images assisted by computer; press and information agencies (news); broadcasting of television programs, television programs; digital file transmissions

Class 41:         Education; training; entertainment; sporting and cultural activities; information relating to entertainment or education; retraining; provision of recreational facilities; publication of books; book loans; production of films on videotape; rental of motion pictures; rental of sound recordings; rental of video and radio and television stations; rental of show scenery; videotape editing; photography services; organization of competitions (education or entertainment); arranging and conducting of colloquiums, conferences or congresses; organization of exhibitions for cultural or educational purposes; reservations of seats for shows; game services provided on-line from a computer network; service of gambling; publication of electronic books and journals on-line; desktop publishing; services of performing artists; rental of videotapes; film productions on videotape; videotaping; mobile library services; ticketing services (entertainment); sound recording studios; motion picture production; operation of gaming halls; sports field rental; rental of toys; gaming equipment rental; provision of recreation facilities; timing of sports events; provisions of sports facilities; photographs; radio entertainment; party planning (entertainment); show productions; presentations of live performances; organization of shows; rental of equipment for sports with the exception of vehicles; stage rental; publication of texts; copywriting; theater performances.

The remaining contested goods and services are the following:

Class 16: Paper, cardboard; aforementioned products not related to sports.

Class 35: Advertising; business management; business administration; office functions.

Contested goods in Class 16

The contested paper, cardboard; aforementioned products not related to sports are included in the broad category of the opponent’s paper, cardboard. Therefore, they are identical.

Moreover, it should be noted that the contested paper, cardboard; aforementioned products not related to sports can be similar to the opponent’s stationery. However, these goods are dissimilar to the goods related to printed matter.

Contested services in Class 35

Advertising; business management; business administration; office functions are rendered by specialised companies, such as advertising establishments or business consultants. Advertising establishments undertake communication to the public and declarations or announcements by all means of dissemination concerning all kinds of goods or services. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share.

These services are not similar to the opponent’s goods in Classes 16 and 25, which include mainly papers, cardboard, stationery and printed matter, and certain clothing and footwear articles, respectively. Likewise, although the contested services can be rendered in relation to the opponent’s goods, this is not sufficient to render them similar, since they have different natures, purposes and distribution channels. They are not complementary or in competition and they target different consumers.

They are not similar to the opponent’s services in Class 41, which consist in providing sporting and cultural activities, entertainment and education, or to the opponent’s services in Class 38, which include services allowing at least one person to communicate with another by sensory means. They have different natures, purposes and providers. They are neither in competition nor complementary to each other. Likewise, although the contested services can be rendered in relation to sports, this is not sufficient to render them similar, since they clearly have different purposes and distribution channels.

7. 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 are directed at the public at large. The degree of attention is considered average.

8. The signs

Earlier trade mark	Contested sign

The relevant territory is France.

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

The earlier trade mark is a figurative sign consisting of the letters ‘OM’ in blue upper case letters and the word ‘JUDO’ in white lower case letters on a square red background. The relevant public will perceive the word ‘JUDO’ as a sport in which two people fight and try to throw each other to the ground. For the relevant goods, this element has an average degree of distinctiveness. For the sake of completeness, for printed matter, the word could be perceived as referring to the subject matter of the goods; therefore, for these goods, the element is weak.

The contested sign is a figurative mark, as described above. The sign has no element that could be considered more dominant (visually eye-catching) than other elements. It is composed of distinctive verbal elements and a less distinctive figurative element of a purely decorative nature, namely the red square background. Therefore, the verbal elements are more distinctive than the figurative element.

Visually, the signs coincide in the letters ‘OM’. However, they differ in the word ‘JUDO’ and the other verbal element of the contested sign and in their stylisation and layout. Therefore, they are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the two letters ‘OM’. The pronunciation differs in the sound of the word ‘JUDO’ in the earlier mark. However, the additional verbal element of the contested sign is not likely to be pronounced. Therefore, the signs are aurally similar to a low degree.

Conceptually, neither of the signs, as whole, has a meaning for the public in the relevant territory. However, the public in the relevant territory will perceive the meaning of the verbal element ‘JUDO’, as defined above. Since the contested sign will not be associated with any meaning, the signs are not conceptually similar.

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

9. 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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Moreover, for the relevant goods, this element has an average degree of distinctiveness. Therefore, the distinctiveness of the earlier mark must be seen as normal.

10. Global assessment, other arguments and conclusion

The goods in question are partly identical and partly dissimilar, and the degree of attention is average. The signs are visually and aurally similar to the extent that they coincide in the two letters ‘OM’. However, the signs also have significant differences, as demonstrated by the comparison carried out in section h). Despite the coinciding letters at the beginnings of the signs, that is, the letters ‘OM’, the endings of the signs have entirely different structures from a visual and an aural point of view. Moreover, the signs are conceptually not similar.

Therefore, taking into account all the relevant factors, the similarities between the signs are not sufficient to counteract the differences and would not lead to a likelihood of confusion.

Considering all the above, there is no likelihood of confusion on the part of the public even in relation to the identical goods. Therefore, the opposition must be rejected insofar as it is based on French registration trade mark No 13 3 983 943, .

The Opposition Division will now examine the opposition in relation to earlier French trade mark registration No 8 3 573 710 for the figurative mark

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

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent shall furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition shall be rejected.

The applicant requested that the opponent submit proof of use of French trade mark No 8 3 573 710.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 07/10/2014. The opponent was therefore required to prove that the trade mark was put to genuine use in France from 07/10/2009 to 06/10/2014 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely the following:

Class 16:        Printed matter; bookbinding; photographs; stationery; adhesives (glues) for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); print; photographs; paper; cardboard; cardboard or paper boxes; posters; albums; cards; books; newspapers; prospectus; brochures; schedule; writing instruments; art lithographic or engraved; painting (pictures) framed and unframed; watercolors; stitching patterns; drawings; drawing instruments; paper handkerchiefs; paper towels; paper tablecloths; toilet paper; paper or cellulose layers (disposable); bags and sachets (envelopes, pouches) of paper or plastics for packaging; garbage bags of paper or plastic.

Class 28:        games and playthings; christmas tree decorations (except lighting articles); christmas trees of synthetic materials; fitness or gym equipment; fishing tackle; balls and play balloons; tables, cues and balls; card games or board games; ice skates or roller; scooters; sailboards or surfing; snowshoes; showshoes; skis; protective paddings (parts of sports clothing).

Class 35:        advertising; business management; business administration; office functions; distribution of advertising materials (leaflets, pamphlets, printed matter, samples); subscription services to newspapers (for others); business organization and business management; accounting; document reproduction; employment agencies; computer file management; organization of exhibition for commercial or advertising purposes; online advertising on a computer network; rental of advertising time on all means of communication; publication of advertising text; rental of advertising space; dissemination of advertising; public relations.

Class 41:         Education; training; entertainment; sporting and cultural activities; information relating to entertainment or education; recreational services; publication of books; book loans; animal training; production of films on videotape; rental of motion pictures; rental of sound recordings; rental of video and radio and television stations; rental of show scenery; videotape editing; photography services; organization of competitions (education or entertainment); organization and conducting of colloquiums, conferences, congresses; organization of exhibitions for cultural or educational purposes; reservations of seats for shows; game services provided on-line from a computer network; service of gambling; publication of electronic books and journals on-line; desktop publishing.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 25/01/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 30/03/2016 to submit evidence of use of the earlier trade mark; this period was extended until 30/05/2016. On 30/05/2016, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

Documents submitted on 30/05/2016

• Enclosure 1: a brochure listing several different stationery goods priced in euros, namely pens, agenda, binders, file folders and pencil cases; a dated photograph of the club, ‘Olympique de Marseille, 2010’; a spreadsheet concerning a licence that was valid from 01/07/2009 to 30/06/2012 that is related to books; two invoices issued to an address in France, in which the name ‘OM’ appears in relation to books; a document from ‘OMboutique’ showing clothes.
• Enclosure 2: documents showing a depiction of a ball and a scooter (ie a child’s vehicle) with the name ‘OM’; 2 invoices for clothes and balls showing the name ‘The Olympic de Marseille’; a spreadsheet concerning a licence for a game that was valid from 01/04/2012 to 31/07/2012, with ‘OM EXPLOITATION’ mentioned at the bottom.
• Enclosure 3: a catalogue, dated 2011/2012, from  featuring football clothes; invoices for a video entitled ‘Les minots de l’OM’, which was produced by Comic Strip Production and ordered by the opponent, L’Olympique de Marseille.
• Enclosure 4: a flyer for training sessions, on which the sign  is visible; the dates for the training sessions are 24/04/2015 to 09/05/2015 and 06/07/2015 to 15/08/2015, that is, not within the relevant period.
• Enclosure 5: an extract from the website boutique.om.net (undated) depicting several types of clothing and also mentioning goods that are not depicted.
• Enclosure 6: an extract from the website boutique.om.net, dated 2006/2007, referring to calendars without depicting the goods.
• Enclosure 7: articles from OM.NET regarding the following matches: OM versus Lyon (dated 17/05/2009), OM versus Nantes (dated 21/03/2009), PSG versus OM (dated 15/03/2009), Copenhagen versus OM (dated 18/02/2010) and ASSE versus OM (dated 30/01/2010 and 13/01/2010).
• Enclosure 8: a printout from Wikipedia regarding the history of Olympique de Marseille (the opponent), also known as L’om , and its successes.
• Enclosure 9: an excerpt from a French online magazine, sportstrategie.com, which covers sports marketing, in French.
• Enclosure 10: articles from the foreign media, including from the BBC, The Independent and USA Today.
• Enclosure 11: an excerpt from the Union of European Football Associations website (UEFA.com) regarding research on OM.
• Enclosure 12: details of several pages that were developed to promote the sign using Twitter, Instagram, YouTube.
• Enclosure 13: an article from the website lebuzz.euros.sport.fr, dated 23/02/2015, related to a survey carried out by KantarSport. It states that ‘OM’ is the favourite club of 13% of French interviewees.

Documents submitted on 10/11/2015, these documents were filed to prove reputation

• Enclosure 1: an extract from Wikipedia regarding the history of Olympique de Marseille, also known as L’om, as a football club.
• Enclosure 2: a copy of a French article from the website Lepoint.fr, dated 07/08/2009, entitled ‘L’om équipe de football préférée des Français’, which is related to a survey.
• Enclosure 3: a copy of a French article from the website Lefigaro.fr, dated 04/10/2013, regarding the sponsorship of the football club by a sports equipment distribution company.
• Enclosure 4: copies of legal documents from the website Legifrance.gouv.fr in French, accompanied by English translations thereof.
• Enclosure 5: a copy of a law book in French, accompanied by an English translation thereof.
• Enclosure 6: an extract from a register describing OM.NET, with no indication of its source.
• Enclosure 7: copies of pages from the OM.Net website.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

It is clear from the evidence, when taken as a whole, that the sign has been used for several years to designate a football club and that the rest of the goods mentioned have merely been used as promotional material to publicise the club.

The extract from Wikipedia stated that Olympic de Marseille, also known as L’om, is a French association football club based in Marseille, which was founded in 1899, and the club has spent most of its history in the top tier of French football (see Enclosure 1, dated 10/11/2015, in English, and several articles from the French press relating to their matches and their popularity in France).

Therefore, there is undisputed evidence that the mark has been used during the relevant time and in the relevant territory. The evidence shows that the place of use is France. This can be inferred from the language of the documents, the currency mentioned (euros) and the articles from French magazines. Therefore, the evidence relates to the relevant territory.

Moreover, in relation to the nature of use, the sign has been used as trade mark in relation to services and as registered, either as word mark or with another stylisation, that complies with the provision of Article 15 EUTMR, because the alteration did not affect the distinctive character of the mark.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed provided the Opposition Division with sufficient information concerning the extent of use for the activities of the football club and marketing. The rest of the goods mentioned are merely promotional material/activities to publicise the football club.

The evidence shows that the opponent offers merchandising products such as stationery, balloons and clothes. The photographs of the goods show the following:  

This evidence has extremely limited value (if any). These photographs merely show items labelled with the name of the football club. Furthermore, photographs alone are not sufficient to prove use, as there is not sufficient information regarding the commercial transactions and activities that may have taken place. These relate to promotional or merchandising goods. However, this is mere speculation and Article 42 EUTMR requires proof of genuine use of the earlier mark, as mentioned previously, and this cannot be done on the basis of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned’ (judgment of 18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 22). Therefore, when considering that the Opposition Division has to make an overall assessment, considering all the circumstances of the specific case, there is not sufficient information contained in the evidence to corroborate any use of the mark for goods in Classes 16 and 28.

As regarding advertising services, the opponent has submitted evidence concerning its promotion of its trade mark. However, it does not prove that it provided the promotional activity as a specialised company.

Regarding the remaining contested goods, no use has been proved, as these goods do not appear in the evidence submitted. The Opposition Division concludes that the evidence is insufficient to establish genuine use of the trade mark in question for the relevant period and for all the goods and services.

Therefore the Opposition Division considers that the evidence shows genuine use of the trade mark only for services rendered by a football Club.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

According to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288).

In the present case, the evidence proves use only for services rendered by a football Club, which belongs to the following category in the specification: sporting activities in Class 41. As the opponent is not required to prove all the conceivable variations of the category of services for which the earlier mark is registered and as the services for which use has been proved do not constitute a coherent subcategory within the broad category in the specification to which they belong, the Opposition Division considers that the evidence shows genuine use of the trade mark for all the sporting activities services for which it is registered and, therefore, the Opposition Division will only consider these services in its further examination of the opposition.

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.

11. The goods and services

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

Class 41: Sporting activities.

The remaining contested goods and services are the following:

Class 16: Paper, cardboard; aforementioned products not related to sports.

Class 35: Advertising; business management; business administration; office functions.

Classes 16 and 35

As mentioned above, the contested goods and services in Classes 16 and 35 are not similar to the opponent’s services in Class 41, which consist in providing sporting activities. They have different natures, purposes and providers. They are neither in competition nor complementary to each other. Likewise, even though the contested goods and services can be related to sporting activities, this is not sufficient to render them similar.

12. Conclusion:

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected as far as this earlier mark is concerned.

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods and services cannot be overcome by the highly distinctive character of the earlier trade mark the evidence submitted by the opponent in this respect does not alter the outcome reached above.

As the opposition is totally not well founded under Article 8(1)(b), the opposition division continue its examination under Article 8(5).

REPUTATION – Article 8(5) EUTMR as regards French trade mark registration No 8 3 573 710  and French trade mark registration No 8 3 555 809 for the word mark ‘OM’

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

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

• The signs must be either identical or similar.

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

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

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

1. Reputation of the earlier trade marks

According to the opponent, the earlier trade marks have a reputation in France

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 25/07/2014. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in France prior to that date. The evidence must also show that the reputation was acquired for the services for which the opponent has claimed reputation, namely sports, entertainment, information in the field of entertainment, leisure services, services rendered by a football Club; education and training in the field sports.

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 10/11/2015 the opponent submitted the following evidence:

• Enclosure 1: an extract from Wikipedia regarding the history of Olympique de Marseille, also known as L’om, as a football club.
• Enclosure 2: a copy of a French article from the website Lepoint.fr, dated 07/08/2009, entitled ‘L’om équipe de football préférée des Français’, which is related to a survey.
• Enclosure 3: a copy of a French article from the website Lefigaro.fr, dated 04/10/2013, regarding the sponsorship of the football club by a sports distribution company (document in French).
• Enclosure 4: copies of legal documents from the website Legifrance.gouv.fr in French, accompanied by English translations thereof.
• Enclosure 5: a copy of law book in French, accompanied by an English translation thereof.
• Enclosure 6: an extract from a register describing OM.NET, with no indication of its source.
• Enclosure 7: copies of pages from the OM.Net website.

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

In particular, and as regards the submissions of 10/11/2015 (listed above), the only evidence that could provide indications of the extent of recognition by the relevant public, namely the extract from Wikipedia, is clearly not sufficient to establish the reputation of the earlier marks in France. This is the case because Wikipedia is a collective encyclopaedia established on the internet, whose content may be amended at any time and, in certain cases, by any visitor, even anonymously, information taken from its articles lack certainty (10/02/2010, T-344/07/ECR, O2 (Germany) v. OHMI (Homezone), EU:T:2010:35, § 46). Wikipedia, by itself, is a low of probative value (03/03/2016, T-778/14, Ugly v. OHIM (COYOTE UGLY), ECLI:EU:T:2016:122, § 37-38). The evidence should have been accompanied by collaborative elements.

The remaining material consists of French articles, which could directly provide indications of the extent of recognition by the relevant public, have not been translated into the language of proceedings. Therefore, the evidence cannot be taken into account.

As regards the printout from the OM.net website, this does not relate to the reputation of the opponent’s earlier trade marks, but merely refers to the activities of the opponent.

It follows that the evidence provides no information on the extent of the use of the earlier marks. The evidence does not provide any indication of the degree of recognition of the trade marks by the relevant public. Furthermore, the evidence does not indicate the sales volumes, the market share of the trade marks or the extent to which the trade marks have been promoted. As a result, the evidence does not show the degree of recognition of the trade marks by the relevant public or that trade marks are known by a significant part of it. Under these circumstances, the Opposition Division concludes that the opponent failed to prove its trade marks have a reputation.

Finally, and for the sake of completeness, the Opposition Division notes that the additional material submitted by the opponent on 30/05/2016 cannot be taken into account, since it was submitted after the relevant time limit to submit further facts and evidence, which ended on 10/11/2015.

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 shall 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

José Antonio GARRIDO OTAOLA

Julie GOUTARD

Loreto URRACA LUQUE

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.