OPPOSITION DIVISION
OPPOSITION No B 2 514 449
E-Plus Mobilfunk GmbH, E-Plus-Str. 1, 40472 Düsseldorf, Germany (opponent),
represented by Lorenz Seidler Gossel Rechtsanwälte Patentanwälte
Partnerschaft mbH, Widenmayerstr. 23, 80538 Munich, Germany (professional
representative)
a g a i n s t
Inovretail, Rua Dr.º Júlio Matos 828/882 Gab.7, 4200-355 Paranhos – Porto,
Portugal (applicant).
On 23/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 514 449 is upheld for all the contested services.
2. European Union trade mark application No 13 358 131 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
Preliminary Remark
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the services of European Union trade
mark application No 13 358 131 . The opposition is based on the
following earlier marks:
– European Union trade mark registration No 4 475 232 (currently in
cancellation proceedings) for the word mark ‘e plus’;
– German trade mark registration No 2 051 156 for the word mark ‘eplus’.
The opponent invoked Articles 8(1)(b) and 8(5) EUTMR.
Decision on Opposition No B 2 514 449 page: 2 of 11
Case remitted back from the Boards of Appeal
On 04/05/2016, the Opposition Division rendered a decision that resulted in the
rejection of the opposition as there was no likelihood of confusion pursuant to Article
8(1)(b) EUTMR and no link could be established under Article 8(5) EUTMR.
The decision was appealed and the Board of Appeal decided in case R 1184/2016 on
13/03/2017. The Board’s decision annulled the contested decision and remitted the
case to the Opposition Division for further prosecution. The Board considered that the
assessment of both grounds had not been correctly carried out, as, under Article 8(1)
(b) EUTMR no level of similarity between the services in question was established,
an error present in the assessment made under Article 8(5) EUTMR, as well as the
fact that the earlier marks’ enhanced distinctiveness and/or reputation was not
evaluated.
The Board therefore remitted the case back to the Opposition Division to carry out a
full assessment of the grounds given that the contested decision had found similarity
between the signs and assumed similarity between the services, which, if coupled
with an earlier mark of an enhanced distinctive character, could lead to rejection of
the contested mark.
In view of the foregoing, the Opposition Division will proceed to examine the
opposition under the grounds of Article 8(5) EUTMR for the earlier German trade
mark referred to in ‘Reasons’, given that at the time of drafting, this is the only valid
earlier mark as the remaining earlier mark is currently in cancellation proceedings.
REPUTATION — ARTICLE 8(5) EUTMR
According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered
earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade
mark will not be registered where it is identical with, or similar to, an earlier trade
mark, irrespective of whether the goods or services for which it is applied are
identical with, similar to or not similar to those for which the earlier trade mark is
registered, where, in the case of an earlier European Union trade mark, the trade
mark has a reputation in the Union or, in the case of an earlier national trade mark,
the trade mark has a reputation in the Member State concerned and where the use
without due cause of the contested trade mark would take unfair advantage of, or be
detrimental to, the distinctive character or the repute of the earlier trade mark.
Therefore, the grounds for 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: 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.
Decision on Opposition No B 2 514 449 page: 3 of 11
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.
a) Reputation of the earlier trade mark
Reputation implies a knowledge threshold that 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 13/10/2014. Therefore,
the opponent was required to prove that the trade mark on which the opposition is
based had acquired a reputation in Germany 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 38: Communications by telephone, in particular mobile radiotelephone
services, operation of a telecommunications network, in particular mobile
telecommunications network, message sending.
The opposition is directed against the following services:
Class 42: Software development, programming and implementation; IT consultancy,
advisory and information services; Rental of computer hardware and computer
software; Design and development of computer hardware and software.
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 27/08/2015, the opponent submitted the relevant evidence as below;
Annex 4: Extract from the German commercial register concerning the opponent
company;
Annexes 5 – 6: Brief outline of the ‘E-Plus network’ history taken from Wikipedia (in
English) and from the German version in which it is stated that the brand has more
than 25 million subscribers and that the company is the third largest mobile operator
in Germany;
Annex 7: Undated advertising materials showing the mark in question as well as
figurative variations such as ;
Decision on Opposition No B 2 514 449 page: 4 of 11
Annex 8-11: Screenshots of E-Plus Service GmbH & Co. KG’s website;
www.eplus.de/Kontakt-und-Hilfe/Kontakt-und-Hilfe.asp from the internet archive; the
screenshots show the Company rates and products;
Annex 12: Article from German online magazine ‘Spiegel online’ concerning an ‘E-
plus’ Sim-card (dated 26/03/2008);
Annex 13: Examples of adverts (screenshots) on German TV stations from
12/03/2008;
Annex 14-20: Range of articles from 2012-2013 concerning announcements of the
takeover of ‘E-Plus’ by ‘Telefónica Germany GmbH’. The articles mostly appear in
online magazines in both English and German and refer to the merger of the two
entities which are described as ‘market leaders’;
Annex 21: Example invoices spanning 2008-2012 relating to the earlier mark and
telecommunication services, though in German, an English translation has been
provided;
Annexes 22-23, 27-29, 33-34, 36-37: Screenshots of the website of the opponent
company and other websites from third parties, as well as Wikipedia extracts,
showing key figures for the group in terms of customers (2004-Q1 2014 customer
base grew from 9.4 million to 25.8 million) and sales revenue (2003 sales revenue
was at 2.10 billion and grew to 3 by 2013); information concerning number of
subscribers to ‘E-Plus’ and number of employees;
Annex 24-26: Range of photos showing the trade mark used in relation to business
establishments in Germany (dated 2007-2010);
Annex 30: Press releases from 2012 including statements such as; ‘setting new
standards’ ‘to guarantee fast and stable data connections. E-Plus built up more
stations in 2011 than ever before in the history of the company’; ‘In Germany, E-plus
is the third largest mobile telecommunications operator’ (all concerning the trade
mark in question);
Annex 31: Extract from annual report 2010 stated that ‘eplus’ is the third largest
mobile telecommunication network operator in Germany;
Annex 32: Extract showing overview of the number and location of ‘E-Plus’ shops in
Germany;
Annex 35: Article from ‘Handelsblatt’ dated 24/01/2012 confirming business figures
referred to in Annex 34;
Annex 38: Extracts from an independent market study ‘European Telecoms Matrix Q2
2011’ of Bank of America Marrill Lynch dated 06/06/2011 referring to the market
share of ‘E-Plus’ being approximately 19% of the German mobile subscriber market
share in 2010 making it the third largest provider in Germany;
Annex 39: Statistics from ‘Wireless intelligence’ dated 31/05/2012 concerning E-Plus’
market share which in Q1 2000 was at 15.8% and 19.1% in Q1 2011;
Annexes 40-41: Copy of decision from Hamburg District court (29/05/2006)
confirming the well known character of the mark in Germany for mobile
telecommunications and from the EUIPO (B 612 426);
Decision on Opposition No B 2 514 449 page: 5 of 11
Annex 42: Extracts from the RSG Marketing Research brand awareness study, an
independent market survey based on data from ‘Nielsen Media’. According to this the
sign ‘E-Plus’ can rely on an aided brand awareness in Germany of more than 90% in
2011. Unaided brand awareness was at 60% in 2011;
Annexes 43-48: Articles from www.handy-deutschland.de, www.chip.de, YouTube,
Handelsblatt dated from 2012 concerning ‘E-Plus’ including articles such as
(translated) one from ‘Spiegel online business’ dated 26/03/2008 which refers to the
brand has as a big independent provider and that despite being taken over, the mark
will be maintained.
Assessment
As a preliminary comment, the Opposition Division undertakes an overall
assessment of the evidence insofar as the pieces of evidence are examined in
conjunction with one another. In this respect, despite much of the material being in
German, some parts have been translated and other pieces are self-explanatory.
Whilst it is true that the opponent has submitted a large amount of evidence deriving
from its own company which in principle reduces the credibility and probative value of
the evidence, given that the more independent and impartial the material, the higher
its value, the information is backed up. The invoices and articles from third parties
largely confirm the revenue, market share and subscription figures listed above. The
evidence shows that the mark has been used for a not insignificant time-span.
Moreover, the fact that the brand is displayed in business establishments throughout
Germany also means that it is has been heavily used and consumers recognise the
mark. Annex 38 is also particularly significant, in the sense that it confirms all the
information deriving from the opponent and it corroborates the market share held by
the opponent’s brand (19%). Furthermore Annex 42 confirms that the brand enjoys
an unaided brand awareness of 60% and aided awareness of 90% in Germany. In
short, the abovementioned evidence indicates that the earlier trade mark has been
used for a substantial period of time. The sales figures and marketing efforts suggest
that the trade mark has a consolidated position in the market. Under these
circumstances, the Opposition Division finds that, taken as a whole, the evidence
indicates that the earlier trade mark enjoys a certain degree of recognition among the
relevant public for communications by telephone, in particular mobile radiotelephone
services, operation of a telecommunications network, in particular mobile
telecommunications network, message sending (in class 38) which leads to the
conclusion that the earlier trade mark enjoys some degree of reputation. Whether the
degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on
other factors relevant under Article 8(5) EUTMR such as, for example, the degree of
similarity between the signs, the inherent characteristics of the earlier trade mark, the
type of goods and services in question, the relevant consumers, etc.
a) The signs
eplus
Earlier trade mark Contested sign
The relevant territory is Germany.
Decision on Opposition No B 2 514 449 page: 6 of 11
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).
Firstly, the registered trade mark symbol as found in minute lettering at the end of the
contested sign, merely indicates that sign is purportedly registered and is not part of
the trade mark as such. Consequently, this will not be taken into consideration for the
purposes of comparison.
As regards the verbal elements of the signs, although both are composed of one
verbal element, the relevant consumers, when perceiving a verbal sign, will break it
down into elements that suggest a concrete meaning, or that resemble words that
they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008,
T-146/06, Aturion, EU:T:2008:33, § 58).
In view of the foregoing, the element ‘plus’ will be perceived in both marks and it is
not particularly distinctive, as it will convey a vaguely positive message, evoking the
idea of ‘something more’ or that the services offer something additional (see decision
of 02/03/2017, R 1736/2016-4, SMARTPLUS, § 19). Therefore, this element is
laudatory and its distinctiveness is deemed to be lower than average.
The element ‘e’ is generally used to refer to the concept of ‘electronic’, or to the fact
that an action can be performed electronically, through the internet or the web. This is
considered descriptive of all the services on which the opposition is based, and
therefore non-distinctive for them. The fact it is conjoined to ‘plus’ does not alter this
conclusion since the relevant public is used to seeing ‘e’ with or without a hyphen or
a space.
The element ‘see’ from the contested sign means ‘lake’ in German and the English
word used to refer to the act of seeing or perceiving something visually may also be
understood given that the relevant consumers will be a professional public with at
least a rudimentary knowledge of English. In both scenarios this element is distinctive
as no connection can be made with the services in question.
Finally, the figurative circular device depicted in orange at the beginning of the
contested sign has a limited impact due to its non-distinctive nature as it is rather an
abstract and banal figurative element that will be perceived as performing a purely
decorative function.
Visually, the earlier mark is wholly included in the contested sign and the only
differences reside in the aforementioned figurative element, the first two letters of the
contested sign ‘se’ and the typeface. Given that consumers generally tend to focus
on the first part of a sign when being confronted with a trade mark, this difference is
particularly important. This is justified by the fact that the public reads from left to
right, which makes the part placed at the left of the sign (the initial part) the one that
first catches the attention of the reader.
Therefore in view of these considerations and taking into account the low distinctive
character of ‘plus’, the signs are visually similar to a low degree.
Aurally, the pronunciation of the signs coincides in the sounds deriving from ‘e(e)’
and ‘plus’ but differ in the sound of the consonant ‘S’ at the beginning of the
contested mark.
Bearing in mind the previous assertions, the signs are aurally similar to a low degree.
Decision on Opposition No B 2 514 449 page: 7 of 11
Conceptually, reference is made to the previous assertions concerning the semantic
content of the signs as well as the issues concerning the distinctiveness of ‘plus’, the
signs are conceptually similar to a low degree.
As the signs have been found similar in at least one aspect of the comparison, the
examination will proceed.
b) The ‘link’ between the signs
As seen above, the earlier mark is reputed and the signs are similar to a low degree.
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.
The contested services are the following:
Class 42: Software development, programming and implementation; IT consultancy,
advisory and information services; Rental of computer hardware and computer
software; Design and development of computer hardware and software.
As indicated previously, the earlier mark has a reputation for services in Class 38
which are essentially telecommunication services.
When comparing the services they are clearly similar given that it is fairly common
place practice for providers of telecommunication services to also offer additional
related services such as rental of computer hardware and software, and indeed, vice-
versa given that all of the services have the same purpose. The contested services
also refer to computer programming services that may be intended for
Decision on Opposition No B 2 514 449 page: 8 of 11
telecommunication activities, in terms of allowing access to networks, connections
between devices or serving as an interface. In fact, all of the services in question can
be provided by the same entity via the same channels and there is a certain
complementary nature. Many telecommunications providers offer IT consultancy
services, particularly as concerns their own services or goods and indeed they also
conceive, design and develop not only hardware but also software. The applicant has
remarked that its services are of a specific nature given that they relate to an
advanced analytical platform to support retail activity thus allowing retailers to
analyse, monitor and take actions in real time. However, any actual or intended use
not stipulated in the list of contested services is not relevant. Consequently, the
applicant’s arguments in this regard must be set aside.
Even taking into account the low distinctive character of ‘plus’ the signs are still
similar to a low degree on each level. Furthermore, the earlier mark has a certain
degree of reputation. On the basis of these factors, also highlighting the coincidence
in the relevant public, it cannot be denied that consumers, when encountering the
contested mark may make 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).
c) 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:
Decision on Opposition No B 2 514 449 page: 9 of 11
Use of the contested application will inevitably result in an economic benefit for
the applicant without due cause since the application mark takes unfair
advantage of the earlier mark’s distinctiveness and repute in Germany.
Due to the high similarity of signs, use of the contested mark results in an image
transfer. This image transfer results in an unjust economic benefit for the
applicant, because it does not have to make marketing investments and can rely
on the repute of the earlier mark and the promotional investments made. Indeed,
the opponent has undertaken long-lasting and intense marketing actions.
Due to the similarity between the marks at issue the contested mark appears to
be a derivative of the widely known opposition mark. In particular this will cause
damage through erosion of the reputation of the opposition mark.
Given the degree of similarity between the signs it is obvious that the opponent
mark’s ability to identify the opponent’s services will be weakened by the use of
the contested sign. Also, since the opposed sign is already intensively used in
the course of trade, it is highly likely that a damage to the opposition mark’s
distinctive character is about to take place.
In other words, the opponent claims 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.
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).
Reference is made to the opponent’s line of argumentation that it claims that the
similarities between the signs and the service will result in the applicant being able to
benefit economically from the efforts made by the opponent in marketing its earlier
mark.
The Opposition Division has already established a link given the similarities between
the signs, the services and the fact that the earlier mark has a certain reputation in
Germany being known as an important provider of telecommunication services. The
Opposition Division opines that the image connected to the earlier mark could be
transferred to the contested mark. The opponent’s mark has been widely used
throughout Germany, the opponent has invested money and its reputation has been
built up over the course of the years. The recognition it enjoys on the market means
that the applicant’s mark would benefit from the attraction and prestige of the earlier
mark.
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.
Decision on Opposition No B 2 514 449 page: 10 of 11
Other types of injury
The opponent also argues that use of the contested trade mark would be detrimental
to the 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.
Conclusion
Given that the opposition is entirely successful under Article 8(5) EUTMR it is not
necessary to examine the remaining ground and the other earlier right on which the
opposition was based.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the
costs incurred by the opponent in the course of these proceedings.
According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the
costs to be paid to the opponent are the opposition fee and the costs of
representation, which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Vita VORONECKAITE Vanessa PAGE Richard BIANCHI
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a
decision of the Opposition Division on request. According to Article 109(8) EUTMR
Decision on Opposition No B 2 514 449 page: 11 of 11
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.