PINGAN PIONEER | Decision 2670324 – Trademarkers Legal Blog

OPPOSITION No B 2 670 324

The Pioneer Group, Inc., 60 State Street, Boston, Massachusetts 02109, United States of America (opponent), represented by Fieldfisher LLP, Riverbank House 2 Swan Lane, London London, City of EC4R 3TT, United Kingdom (professional representative)

a g a i n s t

Ping An Insurance (Group) Company of China Ltd., 15, 16, 17, 18 Floors, Galaxy Development Center, Fu Hua No. 3 Road, Futian District, Shenzhen, Guang Dong Province, People’s Republic of China (applicant), represented by GLP S.R.L., Viale Europa Unita, 171, 33100 Udine (UD), Italy (professional representative).

On 19/05/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 670 324 is partially upheld, namely for the following contested services:

Class 35: Advertising; business management and organization consultancy; providing business information via a web site; provision of an on-line marketplace for buyers and sellers of goods and services; management consultancy (personnel-) ; relocation services for businesses; systemization of information into computer databases; accounting; sponsorship search.

Class 36: Insurance underwriting; financing services; tokens of value (issue of-); appraisal (art-); estate management (real-); brokerage; guarantees; fund raising (charitable-); trusteeship; lending against security.

Class 38: Television broadcasting; transmission of messages and images (computer aided-); electronic bulletin board services [telecommunications services]; providing user access to global computer networks; transmission of digital files; communications by computer terminals; electronic mail; providing internet chatrooms; videoconferencing services; message sending.

Class 42: Research and development of new products for others; information technology [IT] consultancy; search engines (providing-) for the internet; conversion of data or documents from physical to electronic media; software as a service [SaaS]; outsource service providers in the field of information technology; computer system design; authenticating works of art; digital asset management.

2. European Union trade mark application No 14 895 593 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 14 895 593. The opposition is based on earlier European Union trademark registrations No 1 125 798 and No 1 125 814, non-registered trademarks PIONEER INVESTMENT MANAGEMENT and PIONEER INVESTMENTS in the Netherlands, Estonia, Czech Republic, Denmark, Poland, Hungary, United Kingdom, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and Ireland, as well as well-known trade marks PIONEER INVESTMENT MANAGEMENT and PIONEER INVESTMENTS in the Netherlands, Estonia, Czech Republic, Denmark, Poland, Hungary, United Kingdom, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and Ireland. The opponent invoked Article 8(1)(b), 8(5), 8(4) EUTMR and Article 6bis of the Paris Convention in conjunction with Article 8(1)(b) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

The Opposition Division will first examine the opposition in relation to earlier European Union trademark registration No 1 125 798.

The reputation is claimed for the following services:

Class 36: Mutual fund distribution and brokerage services, investment counselling services and mutual fund administration and investment advisory services.

The contested services are the following:

Class 42: Research and development of new products for others; weather forecasting; information technology [IT] consultancy; search engines (providing-) for the internet; conversion of data or documents from physical to electronic media; software as a service [SaaS]; outsource service providers in the field of information technology; computer system design; authenticating works of art; digital asset management.

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.

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

The signs

PIONEER INVESTMENTS

Earlier trade mark

Contested sign

The relevant territory is the European Union.

For reasons of procedural economy the Opposition Division will limit the assessment of the signs to the perception of the German-, and Italian-speaking part of the public in the territory of the European Union, for which the coinciding term ‘PIONEER’ do not possess or evoke any concept.

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 ‘PIONEER INVESTMENTS’ and thus it is the expression as such that is protected and not its written form. The mark as a whole is considered distinctive. However, the word ‘INVESTMENTS’ is considered descriptive for all the services, since they are financial services. Indeed, this English word being the plural form of ‘INVESTMENT’ means, inter alia, ‘the amount by which the stock of capital (plant, machinery, materials, etc) in an enterprise or economy changes’ (www.collinsdictionary.com). It is likely to be understood also by the public under analysis, either because it is very close to the equivalent word in the languages of this public (‘investimenti’ in Italian and ‘Investition’ in German) or because, due to its widespread use it became familiar term in relation to the relevant services, in particular for consumers of these services. Therefore, the public under analysis will understand this expression and perceive it as a direct reference to the nature, the content and/or the destination of the services. Consequently, little attention will be paid to this element.

The contested sign is a figurative sign consisting of four Asian or Chinese characters placed above the verbal elements ‘PINGAN PIONEER’, which are depicted in an almost standard bold typeface. The Asian characters will be perceived as figurative elements and not as words since they are not officially used in any territory of the European Union. The mark is distinctive, since it has no meaning.

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

Visually, the signs are similar to the extent that they coincide in the verbal element ‘PIONEER’. However, they differ in the weak term ‘INVESTMENTS’ of the earlier mark and, for the contested sign, in the word ‘PINGAN’, the additional Asian characters and the slightly stylised typeface.

However, with regard to the figurative parts of the earlier mark, it has to be noted that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Taking into account the relevant reasons mentioned above, the signs are visually similar to an average degree.

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 word ‘PIONEER’, present identically in both signs. The pronunciation differs in the sound of the additional weak word ‘INVESTMENTS’ in the contested sign and of the verbal element ‘PINGAN’ in the earlier mark. Taking into account the relevant reasons mentioned above, the signs are aurally similar to an average degree.

Conceptually, the coinciding term ‘PIONEER’ and the word ‘PINGAN’ of the contested sign have no meaning for the relevant public.

The figurative elements of the contested sign will not be understood but will be associated with Chinese, or at least with an Asian language.

By contrast, the term ‘INVESTMENTS’ of the earlier mark will be understood by the whole public, as detailed above. Therefore, the signs are not conceptually similar. However, it has to be noted that the conceptual difference between the signs lies in a non-distinctive term, which will hardly have an impact, if any at all.

Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar.

Reputation of the earlier trade mark

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

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 09/12/2015. Therefore, the opponent was required to prove that the trade mark 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 services for which the opponent has claimed reputation, namely:

Class 36: Mutual fund distribution and brokerage services, investment counselling services and mutual fund administration and investment advisory services.

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 21/09/2016 the opponent submitted evidence to support this claim. 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 consists notably of the following documents attached at Annex D:

A Witness Statement of the assistant secretary of the opponent dated 20/09/2016, which states among others that there is a significant reputation in the Pioneer marks of the opponent, that the opponent was founded in 1928 and has offices in 15 EU Member States, that the earlier mark has been in continuous use since 200 and is registered in a large number of countries worldwide. The Witness also provides a lot of information about revenue, market share, advertising as well as public and industry recognition, which is documented by numerous exhibits.

Exhibit 1: a brochure containing a summary of the company history and capabilities. It also informs that Pioneer Investments is ranked among the top asset managers in many countries, notably in Italy and Austria, and is ranked 5th worldwide for multi-asset flows. In addition, the brochure lists numerous awards received.

Exhibit 2: chart showing the structure of the group to which the opponent belongs (now known as Pioneer Investment Management USA Inc.).

Exhibit 3: list of 49 worldwide trade mark applications and registrations for the Pioneer Investments marks.

Exhibit 4: global presence. The company has many offices in Europe, the Americas, Asia and Australia.

Exhibit 5: revenue. The document shows significant revenues between 2010 and 2015 worldwide and also notably in Germany, Italy and Austria.

Exhibit 6: market share. The brochure shows a significant market share from 2012 up to March 2016 across Europe as a whole and in individual EU member States.

Exhibit 7(a): advertising expenditure in Italian newspaper MF / Milano Finanza 2012. No reference is made to ‘PIONEER INVESTMENTS’.

Exhibit 7(b): advertising expenditure in Italian newspapers and other media 2008 to 2010. The document is an external analysis made by the company Mediacom, a media agency, and states that Pioneer is ranked third for the period 2008 to 2011 in advertising expenditure. The amounts are very substantial. Express reference is made to ‘PIONEER INVESTMENTS’.

Exhibit 7(c): advertising expenditure in Italian newspapers 2010 to 2012. The external analysis made by Mediacom states that Pioneer is ranked ninth for this period in advertising expenditure. The amounts are very substantial. Express reference is made to ‘PIONEER INVESTMENTS’.

Exhibit 7(d): advertising expenditure with Bloomberg TV, Bloomberg, Institutional Investor, FT.com and Financial Times July to September 2013. The amounts are very substantial. Express reference is made to ‘PIONEER INVESTMENTS’.

Exhibit 7(e): advertising expenditure with FTfm, P&I, Bloomberg TV, Bloomberg.com, FT.com, LinkedIn.com, Dianomi, BeOn and Google Ireland from September to December 2013. The amounts are very substantial. Express reference is made to ‘PIONEER INVESTMENTS’.

Exhibit 7(f): media expenditure 2015. The document is issued by Mediacom and shows the budget for 2015, with details of actual monthly expenditure in a number of EU Member States and advertising media. The amounts spend on advertising by way of TV, radio, newspapers, magazines, ‘out of home’ and internet is significant, especially in Germany, Austria, Italy and UK. Express reference is made to ‘PIONEER INVESTMENTS’.

Exhibit 7(g): media plan 2016. It sets out various planned advertisements across a wide range of financial publications, both online and print and including some based in EU Member States, with notably a broad range of publications in Germany and the UK.

Exhibit 7(h): UK media plan for Investment Week and Professional Pensions April to July 2015. The amounts are significant and express reference is made to ‘PIONEER INVESTMENTS’.

Exhibit 7(i) UK media campaign October 2015 to February 2016. Reference is made to ‘PIONEER INVESTMENTS’.

Exhibit 7(j) UK media plans for 2013 in the publications Pensions Week, Investment Week, Professional Pensions, Pension Funds Online and NAPF. No reference is made to ‘PIONEER INVESTMENTS’.

Exhibit 8 shows examples of other advertising and media strategy, namely:

Exhibit 8(a): marketing content newsletter. An email sets out all the non-product-specific marketing content produced over the world.

Exhibit 8(b): plans for alternative advertising 2011 regarding ‘PIONEER INVESTMENTS’. This includes notably sponsoring as well as promotional and advertising objects.

Exhibit 8(c): Examples of sponsorship of industry events in London regarding ‘PIONEER INVESTMENTS’.

Exhibit 9 shows print and online advertisements regarding ‘PIONEER INVESTMENTS’ in the European Union up to 2016.

Exhibit 9(a) Print advertisements pre-2013.

Exhibit 9(b) Print advertisements 2015.

Exhibit 9(c) UK print advertisements 2013, 2014 and 2016.

Exhibit 9(d) Ireland print advertisements 2012, 2014 and 2015.

Exhibit 9(e) Online advertisements.

Exhibit 10: reports prepared by the agency MediaCom for particular advertising campaigns for ‘PIONEER INVESTMENTS’.

Exhibit 10(a) Advertising campaign online impressions July to September 2013. The document shows significant impressions (number of times an advertisement is seen on a website) delivered on the websites of Bloomberg, institutional investors and Financial Times where ‘PIONEER INVESTMENTS’ was advertised.

Exhibit 10(b) Advertising campaign online impressions September to December 2013. The document shows significant impressions, notably in the UK.

Exhibit 10(c) Advertising campaign online impressions Bloomberg December 2015.

Exhibit 11 Colloquia Series Magazine ‘PIONEER INVESTMENTS’ 2013. It can be seen that 400 delegates attended this event, with over 60 members of the international press from leading publications including, FT, CNBC and Reuters.

Exhibit 12(a): ‘PIONEER INVESTMENTS’ is featured in the magazine ‘G20 Turkey: The Antalya Summit 2015’. This publication was distributed to G20 world leaders, media and business leaders assembled for the event, global financial institutions, central banks, financial development agencies, government ministers of G20 members and CEOs of global firms.

Exhibit 12(b): G20 Turkey: The Antalya Summit 2015 background materials

Exhibit 13: Fund Buyer Focus' annual reports Fund Brand 50 including 2013 and 2016. For 2013 ‘PIONEER INVESTMENTS’ was ranked 27 in its top 50 cross-border European asset management brands and featured in the top 10 for Austria. For 2016, the brand featured in the top 20 for Germany, Italy and Spain.

Exhibit 14: Ignites Europe report 2015. ‘PIONEER INVESTMENTS’ is cited in the top 12 best sellers list for 2015 in Europe.

Exhibit 15: MiP industry peer group marketing report 2013. The report shows a significant Pan European spend by ‘PIONEER INVESTMENTS’ and shows that this compares favourably with the industry peer group. There is a detailed breakdown of advertising expenditure by country and by type of advertising.

Exhibit 16: Web page extracts from the opponent, LinkedIn and Twitter.

Exhibit 17: Industry awards. The documents show numerous awards and nominations received by ‘PIONEER INVESTMENTS’. In particular, it was nominated as one of the best the fund management industry has to offer. Details of the awards are set out in the summary report at Exhibit.

Exhibit 18(a): Press coverage 2015 flows. In particular, it can be read in ‘Investment week’ that ‘PIONEER INVESTMENTS’ reached a record of €15.2bn inflows for 2015.

Exhibit 18(b) Press coverage September and October 2013

Exhibit 18(c) Press coverage July to September 2015

Having examined the material listed above, the Opposition Division concludes that the earlier trade mark has a reputation in the European Union for all the services for which the opponent has claimed reputation. The reputation is particularly important in the UK, Austria, Germany and Italy.

Indeed, the abovementioned evidence and affidavits with supporting evidence indicate that the earlier trade mark has been intensely used for a substantial period of time is generally known in the relevant market. The evidence shows also that the trade mark has been used as registered. The sales figures, revenues and market share as well as the considerable marketing efforts (attested notably by advertisement expenditures from external sources), the numerous awards and the extensive press coverage in leading magazines and newspapers suggest that the trade mark has a consolidated position in the market among the leading brands. Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade mark enjoys an important degree of recognition among the relevant public, which leads to the conclusion that the earlier trade marks enjoy a solid reputation.

It is further noted that the world rankings of the brand, the trade mark registrations and applications all over the world, confirm that the opponent invested in the building of the ‘PIONEER INVESTMENTS’ brand and its recognition and protection.

It is evident from the evidence that ‘PIONEER INVESTMENTS’ is used as a mark but also designates a company. However, even in that case, it is also clarified that this is a financial institution of the opponent, namely one that provides financial services. Therefore, the name of the financial institution ‘PIONEER INVESTMENTS’ can be regarded as used in relation to the services. It is clear from the submitted evidence, taken as a whole, that a link is established between the name of this institution and the financial services it provides.

The evidence does not succeed in establishing that the trade mark has a solid reputation for all the member States. However, as reputation is proven for a substantial part of the relevant territory (notably the UK, Austria, Germany and Italy), it is concluded that the opponent succeeded in proving that the earlier marks have enhanced distinctiveness in the relevant territory as a whole.

The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙ the degree of similarity between the signs;

∙ the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙ the strength of the earlier mark’s reputation;

∙ the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙ the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

In the present case, it is likely that such a link will exist between the marks for most of the contested services.

Firstly, as regards the degree of similarity between the signs required under Article 8(5) EUTMR, the Court has held that it differs from that required under Article 8(1)(b) EUTMR. Whereas the implementation of the protection provided for under Article 8(1)(b) EUTMR is conditional upon a finding of a degree of similarity between the marks at issue such that there exists a likelihood of confusion between them on the part of the relevant section of the public, the existence of such a likelihood is not necessary for the implementation of the protection conferred by Article 8(5) EUTMR. Accordingly, the types of injury referred to in Article 8(5) EUTMR may result from a lesser degree of similarity between the marks in question, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them (23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 27, 29 and 31; and 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 57, 58 and 66).

In the present case, the signs are similar to the extent that they notably coincide in the distinctive and independent term ‘PIONEER’. Moreover, most of the additional elements have a limited impact. Finally, the earlier mark is inherently distinctive for an significant part of the public.

Secondly, the opponent’s sign enjoys a high degree of recognition among the relevant public in relation to financial services and is bound to be known to a substantial part of the public that the contested services target.

It is further to be noted that the establishment of a link, while triggered by similarity between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

The services for which the earlier mark has a reputation are the following:

Class 36: Mutual fund distribution and brokerage services, investment counselling services and mutual fund administration and investment advisory services.

The contested services are the following:

While most of the contested services in Classes 35 and 36 are identical or similar, it is true that the remaining services are dissimilar to the earlier reputed services; however, having regard to their nature and taking into account and weighing up all the relevant factors of the case at hand, the Opposition Division concludes that the gap between the majority of them is not so large and consequently there exists, at least, prima facie, a possibility that the contested mark, when being encountered in relation to all the contested services for which protection is sought, will bring to the mind of the relevant consumers the earlier mark. Indeed, regarding Classes 38 and 42, it has to be noted that financial services are now strongly related to new Information technologies and are carried out using different means of telecommunications.

Moreover, it must be noted that the relevant publics of these services in conflict overlap to some extent, as they are professionals involved in business or general consumers who can also contract financial services. Furthermore, financial institutions offer investment products in the sectors covered by the contested services and offer financial solutions for companies active in this sector.

It may also be recalled that the Court of Justice has noted, ‘…that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered. (27/11/2008, C252/07, Intel, EU:C:2008:655, § 51 and 52.). In the present case, the earlier mark enjoys an important degree of recognition and a solid reputation for the relevant services.

However, for the contested retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies in Class 35 and the weather forecasting in Class 42, the Opposition Division considers that they are not only dissimilar (because they notably have different nature and purpose, are provided by different companies, target different end consumers and are not complementary) but they are so far apart from the opponent's services that no link would be established. Indeed, the spheres of economic activities in question versus the financial services of the earlier mark are so distinct that the only point they have in common is that they can all target, in certain cases, the same relevant public. A link between these services is unlikely to be made, given that they are not likely to bring the former services to the mind of the consumer. In the present case, there is no nexus between the market of the opponent’s services on one hand and the markets of the remaining applicant’s services, on the other.

While it is indeed possible that the public for the services covered by the mark applied for may also be aware of the earlier marks, the fields of activity are so far apart that the public would not even establish a link between the signs for such different services. Therefore, the opposition is not well founded under Article 8(5) EUTMR for these two services and must be rejected.

On the contrary, for all the other contested services, the Opposition Division concludes that when encountering the contested mark the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs.

However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 96).

Risk of injury

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

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

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

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

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims the following that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to the distinctive character and repute of the earlier trade mark.

Before examining the opponent’s claims, it is appropriate to recall that the opposition is directed against the following services for which it has been found above that the public will establish a link between the signs:

Class 42: Research and development of new products for others; information technology [IT] consultancy; search engines (providing-) for the internet; conversion of data or documents from physical to electronic media; software as a service [SaaS]; Outsource service providers in the field of information technology; computer system design; authenticating works of art; digital asset management.

As seen above, the earlier trade mark was found to have a reputation for:

Class 36: Mutual fund distribution and brokerage services, investment counselling services and mutual fund administration and investment advisory services.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following.

There may be transference of the image projected by the reputed mark onto the services offered the later mark. The result being that the marketing of those later services is made easier due to that association with the earlier reputed mark.

Use of the contested sign would take unfair advantage of the reputation and distinctive character of the earlier mark by exploiting that reputation and distinctive character so that the image of success, security and reliability projected by the opponent’s mark would transfer to the services offered under the contested sign. Consumers would be led to make use of the Applicant's service under the contested sign as a result.

Therefore, the Applicant would thereby gain the benefit associated with the reputation in the opponent's Marks without the associated costs of developing or maintaining such a reputation.

The combination of the similarity between the marks in question, the similarity between the services in Class 36, the nature of the remaining applied for services and their likely connection with, or application in, the core financial services of both parties, together with the high reputation and strong degree of distinctive character of the opponent's mark mean it is a reasonably foreseeable consequence that use of the contested sign would take unfair advantage of the distinctive character and repute of the opponent's Marks.

In determining the likelihood that unfair advantage will occur, there are several factors to consider. Those factors include notably the degree of similarity between the conflicting marks, the nature of the goods and services for which these marks are registered, including the degree of closeness or dissimilarity between those goods and services, the strength of the earlier mark’s reputation and the degree of the earlier mark’s distinctive character. Moreover, the existence of such injury must be assessed by reference to the average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 36.).

As seen above, there is a link between the signs due notably to the similarity of the signs, the strong reputation of the earlier mark and the relationship between the services. There are sufficient connexions between the signs for the consumer to form an association between them in respect of the abovementioned services which could be directed at overlapping sections of the public.

According to the Court, the stronger the earlier mark’s distinctive character and reputation, the easier it will be to accept that detriment has been caused to it (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 67, 74; 25/05/2005, T-67/04, Spa- Finders, EU:T:2005:179, § 41). The same applies to the unfair advantage that the applicant might enjoy at the expense of the earlier mark. A very strong reputation is both easier to harm and more tempting to take advantage of, owing to its great value.

The Court has even stated that it is possible that an extremely strong reputation may, exceptionally, constitute in itself an indication of the future, non-hypothetical risk of the mark applied for as such taking unfair advantage in relation to each of the goods and services which are not similar to the goods and services in respect of which the earlier trade mark is registered (02/10/2015, T-625/13, Darjeeling collection de lingerie / DARJEELING et al., EU:T:2015:742, § 134, 139).

In the present case, there is a high probability that the use of the contested mark may lead to free-riding, that is to say, it would take unfair advantage of the established reputation of the earlier trade mark and the huge investments made by the opponent to achieve that reputation. As claimed by the opponent, the image of success, security and reliability projected by the opponent’s mark would transfer to the services offered under the contested sign. The opponent has invested money in developing and building the reputation of its earlier mark as evidenced high figures and investments from independent sources. Notably, the opponent’s advertising efforts have focused on and succeeded in not only creating widespread high awareness of the earlier mark but also ensuring that it projects a very positive image in many different respects. This is proven and reflected, inter alia, by the numerous and prestigious awards received. Thus, the applicant would benefit from the attraction and prestige of the earlier trade mark without expenditure.

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Other types of injury

The opponent also argues that use of the contested trade mark would be detrimental to the distinctive character and repute of the earlier trade mark.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.

In addition, it must be noted the Opposition Division concluded that there is no link regarding the contested retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies in Class 35 and the weather forecasting in Class 42. Considering that such a link is a necessary condition for Article 8(5) EUTMR to apply, the examination of the other types of injury cannot lead to correct this deficiency.

Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR insofar as it is directed against the following services:

The opposition is not successful insofar as the remaining services are concerned, namely retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies in Class 35 and the weather forecasting in Class 42.

The opponent has also based its opposition under Article 8(5) EUTMR on the earlier European Union trade mark registration No 1 125 814 for the word mark 'PIONEER INVESTMENT MANAGEMENT'.

Since this mark is less similar and covers the same scope of services, the outcome cannot be different with respect to services for which the opposition has already been rejected.

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 earlier European Union trademark registrations No 1 125 798 and No 1 125 814.

The services

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

Class 36: Mutual fund distribution and brokerage services, investment counselling services and mutual fund administration and investment advisory services.

The remaining contested services are the following:

Class 35: Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies.

Class 42: Weather forecasting.

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.

Under Article 8(5) EUTMR, the Opposition Division already concluded that these services in conflict are dissimilar. There is no nexus between the market of the opponent’s services on one hand and the markets of the applicant’s services, on the other. It is highly unlikely that that public will encounter the services covered by those marks in the same establishments or think of the services covered by one mark when presented with the services covered by the other mark. Moreover, the services in question have different commercial origins, are provided through different channels and are neither complementary nor in competition with each other.

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 services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

EARLIER WELL-KNOWN MARKS – ARTICLE 8(1)(b) EUTMR IN CONJUNCTION WITH ARTICLE 6BIS OF THE PARIS CONVENTION (AND ARTICLE 8(2)(c))

As seen above, the opponent bases the opposition on, inter alia, well-known trade marks 'PIONEER INVESTMENT MANAGEMENT' and 'PIONEER' INVESTMENTS' in the Netherlands, Estonia, Czech Republic, Denmark, Poland, Hungary, United Kingdom, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and Ireland. The opponent invoked Article 6bis of the Paris Convention in conjunction with Article 8(1)(b) EUTMR.

According to the Office’s Guidelines for Examination in the Office, Part C: Opposition, Section: 1, page 41, in cases where in the proceedings before the Office the opponent invokes a registered trade mark and claims the same mark in the same country as a well-known mark, this will in general be taken as a claim that its registered mark has acquired a high degree of distinctiveness by use.

The Opposition Division, therefore, would normally not assess the opposition in so far as it is based on well-known mark separately, but would consider that what is actually claimed by the opponent is that the earlier registered EU trade marks No 1 125 798 and No 1 125 814 have acquired a high degree of distinctiveness by use.

However, in the present case, whether considered well-known national marks or EU trade mark registrations with a claim of higher distinctiveness, it remains that there is no need to assess the claimed well-known character or enhanced degree of distinctiveness of the opposing marks in relation to the remaining services which, as seen above, have been found dissimilar 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 were well-known or enjoyed an enhanced degree of distinctiveness.

Since the services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must also be rejected insofar as based on the above earlier well-known trade marks.

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

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.

The right under the applicable law

According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

According to Rule 19(2)(d) EUTMIR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C-263/09 P, Elio Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the Opposition Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.

As regards national law, the opponent must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. The opponent must provide a reference to the relevant legal provision (article number, and the number and title of the law) and the content (text) of the legal provision either as part of its submission or by highlighting it in a publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision). As the opponent is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the opponent must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation.

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

The opponent based its opposition on the non-registered trademarks PIONEER INVESTMENT MANAGEMENT and PIONEER INVESTMENTS in the Netherlands, Estonia, Czech Republic, Denmark, Poland, Hungary, United Kingdom, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and Ireland.

Except for Germany and the United Kingdom, the opponent did not submit any information on the legal protection granted in the claimed Member States to the type of trade sign invoked by the opponent. The opponent did not submit any information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the laws in each of the remaining Member States mentioned by the opponent. For this reason, if for no other, the opposition has to be rejected insofar as based on the non-registered trademarks PIONEER INVESTMENT MANAGEMENT and PIONEER INVESTMENTS in the Netherlands, Estonia, Czech Republic, Denmark, Poland, Hungary, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and Ireland.

Regarding Germany, the opponent did not submit sufficient information on the legal protection granted to an unregistered sign in that territory. Notably, it did not provide the applicable law in the original language, which is mandatory, since the opponent is required to prove the content of the applicable law. For this reason, if for no other, the opposition has to be rejected insofar as based on the non-registered trademarks PIONEER INVESTMENT MANAGEMENT and PIONEER INVESTMENTS in Germany. In addition, it has to be recalled that it is not sufficient to make a general reference to the national legislation, which is listed merely for information purposes in the ‘Table on National Rights that constitute “earlier rights” in the sense of Article 8(4) EUTMR’ of the Office’s Guidelines Concerning Opposition under Article 8(4) EUTMR.

With regard to the United Kingdom, the opponent claims to have the right to prohibit the use of the mark applied for under the tort of passing off and based on non-registered trade marks in the United Kingdom.

However, the opponent did not submit sufficient information on the legal protection granted to the United Kingdom non registered trade marks under the tort of passing off. It made some references in its observations to supposed case-law. However, it is impossible to determine where the references originate from. The opponent does not even state that the references derive from English courts. Moreover, the opponent did not furnish any copies of the presumed decisions to which it refers.

It should be recalled that, even when it is clear that the opponent relies on national case-law to prove its case, it must provide the Office with this case-law in sufficient detail (a copy of the decision invoked) and not merely by references, quotations or extracts from decisions and publications somewhere in the legal literature. The proof of the source, namely the applicable law or indeed relevant case-law, is all the more important in a case of passing off that it is a common law tort. Moreover, treating the national legal situation as an issue of fact which is subject to proof by the party alleging such a right, is also justified by the fact that the Opposition Division is not always in a position to, in particular, monitor the corresponding changes of legislation or development of the case-law in all the Member States. In the present case, explicit and complete references to English case-law as well as copies of decisions should have been submitted by the opponent. Pursuant to the previous cited Article 76(1) EUTMR, the opposition must be rejected already for these reasons.

For the sake of completeness, despite its common law roots, the passing off action is explicitly stated in section 5(4)(a) of the UK Trademark Act, under the other signs used in the course of trade which might prohibit the use of subsequent trade marks. However, the opponent did not base its opposition on section 5(4)(a), just as it did not provide any copy of the legal provision.

Lastly, it is again worth recalling that the onus is on the opponent to submit evidence as well as the opponent’s duty to collaborate when submitting evidence. According to Article 76(1) EUTMR and the limited power of examination of the Office, the filing of evidence must be sufficiently clear, precise, complete and reliable to enable the other party to exercise its right of defence and the Office to perform its examination, without reference to extraneous or supportive information. It is not the role of the first instance jurisdiction to check of its own motion the information regarding the national law currently in force. This is also justified by the general principle of equal treatment between the parties, i.e. that the Opposition Division must not act to favour one party.

It is true that the case law recognises that the Office has a certain power of verification. However, it is limited to ensuring the accurate application of the law relied upon by the opponent. It does not therefore discharge the opponent from the burden of proof and it cannot serve to substitute the opponent in adducing the appropriate law for the purposes of its case (see decision of 02/06/2014, R 1587/2013-4, GROUP, § 26 and decision of 30/06/2014, R 2256/2013-2, ENERGY, § 26).

In any event, for the sake of completeness, it should also be noted that a successful claim for passing off must satisfy three cumulative conditions. Failure to satisfy any one of them means that the claim cannot succeed. One of these conditions is that the opponent must demonstrate that the applicant’s mark would be likely to lead the public to believe that the applicant’s services originate from the opponent. In other words, the public would be likely to believe that services put on the market under the contested trade mark are actually those of the opponent.

However, the public is unlikely to be misled where the contested services are dissimilar to those upon which the opponent’s goodwill has been built and, in the present case, it has already been stated that the remaining contested services are dissimilar to the opponent's services.

In view of all the above, the opposition is therefore not well founded and must be rejected insofar as based on Article 8(4) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. 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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Julie GOUTARD

Steve HAUSER

Martina GALLE

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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