OPPOSITION No B 2 348 038

World Trade Centers Association, INC., 120 Broadway, Suite 3350, New York New York NY 10271, United States of America (opponent), represented by Locke Lord LLP, 201 Bishopsgate, London  EC2M 3AB, United Kingdom (professional representative)

a g a i n s t

Sant Cugat Trade Center, S.L., Av. Corts Catalanes 9-11, 08173 Sant Cugat del Vallès, Spain (applicant), represented by Ingenias, Av. Diagonal, 421,2º, 08008 Barcelona, Spain (professional representative).

On 30/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 348 038 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 12 194 321. The opposition is based on the following earlier marks:

• Cypriot trade mark registration No 80 709 for the word mark ‘WORLD TRADE CENTER’;
• Cypriot trade mark registration No 80 712 for the word mark ‘WORLD TRADE CENTER’ ;
• Maltese trade mark registration No 51 529 for the word mark ‘WORLD TRADE CENTER’;
• Maltese trade mark registration No 51 528 for the word mark ‘WORLD TRADE CENTER’;
• Maltese trade mark registration No 51 525 for the word mark ‘WORLD TRADE CENTER’;
• Italian trade mark registration No 1 217 072 for the word mark ‘WORLD TRADE CENTER’;
• Italian trade mark registration No 1 460 229 for the figurative mark ;
• Danish trade mark application No 147 563 for the word mark ‘WORLD TRADE CENTER’;
• Latvian trade mark registration M 64 421 for the word mark ‘WORLD TRADE CENTER’,

in relation to which the opponent invoked Article 8(1)(b) and 8(5) EUTMR. Furthermore, the opposition is based on well-known marks in all the Member States of the European Union, invoked in conjunction with Article 8(2)(c) EUTMR, as well as on earlier non-registered marks ‘WORLD TRADE CENTER’ for the territories of all the Member States of the European Union, in relation to which to opponent invoked Article 8(4) EUTMR.

PRELIMINARY REMARKS ON THE SUBSTANTIATION OF THE EARLIER RIGHTS

Earlier registered rights

The Opposition Division notes that at the moment of filing the opposition the opponent’s earlier Danish right was a trade mark application; moreover, on a later stage, the opponent did not provide any relevant evidence to prove that this earlier right had proceeded to registration.  

Furthermore, in the course of the proceedings, the opponent was asked to submit a renewal of its earlier right, Italian trade mark registration No 1 217 072, in order to prove the validity of this earlier right beyond the relevant period. On 29/03/2017, the opponent submitted a copy of a renewal application regarding the relevant earlier right, as well as the relevant translation into English. However, the Opposition Division notes that the renewal application was not itself sufficient to prove the validity of the relevant earlier rights.

Although the validity of the above mentioned earlier rights has not been proven, for the purposes of procedural economy and for the sake of completeness, by the assessments conducted below, the Opposition Division will take into account also these earlier rights to the extent that the validity matter of the latter is irrelevant for the outcome of the proceedings.

Earlier non-registered rights

The opponent based its opposition on, inter alia, earlier non-registered trade marks for the territories of the European Union, Austria, Bulgaria, Benelux, Croatia, Cyprus, Czech republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Malta, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United Kingdom, in relation to which the opponent invoked Article 8(4) EUTMR. As far as it concerns the invoked non-registered European Union trade mark, the Opposition Division notes that non-registered trade marks are not protected under European Union law. Therefore, such rights cannot be validly claimed as the basis for an opposition on the grounds of Article 8(4) EUTMR, since they do not exist as such. As a consequence, the present opposition must be rejected as inadmissible insofar as it is based on a non-registered trade mark ‘owned’ in the European Union.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s earlier word marks, namely:

• Cypriot trade mark registration No 80 709 for the word mark ‘WORLD TRADE CENTER’;
• Cypriot trade mark registration No 80 712 for the word mark ‘WORLD TRADE CENTER’ ;
• Maltese trade mark registration No 51 529 for the word mark ‘WORLD TRADE CENTER’;
• Maltese trade mark registration No 51 528 for the word mark ‘WORLD TRADE CENTER’;
• Maltese trade mark registration No 51 525 for the word mark ‘WORLD TRADE CENTER’;
• Italian trade mark registration No 1 217 072 for the word mark ‘WORLD TRADE CENTER’;
• Danish trade mark application No 147 563 for the word mark ‘WORLD TRADE CENTER’;
• Latvian trade mark registration M 64 421 for the word mark ‘WORLD TRADE CENTER’.

1. The services

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

Cypriot trade mark registration No 80 709

Class 35: Organisation of trade fairs, exhibitions, display, conferences and meeting for commercial or advertising purposes, economic forecasting services, business advices in respect with import-export, and other substances advices, marketing research, business investigations services, office rental and secretarial equipment, secretarial, typing, word processing, photocopying and telephone services, granting statistical studies and others –ouykpowv- information in respect with businesses and general marketing, computer data bases (compilation of information into ), diffusion advertising or propellant subjects, advertising and services offered in other persons, granting electronic internet base data that to contain international commercial exchange.

Cypriot trade mark registration No 80 712

Class 41: Conducting seminars in the field of international trade, organising and hospitality cultural and training exhibitions, exhibitions, presentations, conferences and workshops in the field of international trade, translation services, interpreting services.

Maltese trade mark registration No 51 529

Class 42: Association services; namely, fostering and promoting world trade and international business relationships.

Maltese trade mark registration No 51 528

Class 41: Conducting seminars in the field of international trade; organization and hosting of cultural and educational fairs, exhibitions, displays, conventions, conferences and workshops in the field of international trade; translation services; language interpretation services.

Maltese trade mark registration No 51 525

Class 35: Organization of trade fairs, exhibitions, displays, conventions, and conferences for commercial or advertising purposes; economic forecasting; business consultation in relation to import-export, and other business consultancy; marketing research; business research; rental of office machines and secretarial equipment; secretarial, typing, word processing, photocopying, and telephone answering services; provision of trade and business statistics and other comparable information; compilation of information into computer databases; dissemination of advertising or promotional matter, advertising the goods and services of others; providing and on-line computer database featuring international trade information.

Italian trade mark registration No 1 217 072

Class 35: Advertising management, commercial affairs, commercial management, office work.

Class 36: Insurance, banking, real estate affairs.

Class 37: Construction, building, repair services, installation.

Class 38: Telecommunication.

Class 41: Instruction, training, entertainment, sporting activities and cultural.

Class 42: Services scientific and technological and research services and planning for these relating services, analysis and research, industrial planning and development of hardware and computer software, services legal services selection and consultation with respect in goods and services, specialized services for public consist of in selection and organization of supply and sale of goods and services provided by associations have members

Danish trade mark application No 147 563

Class 35: Organization of trade fairs, exhibitions, displays, conventions, workshops and conferences for commercial or advertising purposes; economic forecasting; business consultation in relation to import-export, and other business consultancy; market research; business research; rental of office machines and secretarial equipment; secretarial, typing, word processing, photocopying, and telephone answering services; provision of trade and business statistics and other comparable information; compilation of information into computer databases; dissemination of advertising or promotional matter; advertising and the advertising of goods and services of others; providing an on-line computer database featuring international trade information; office management services. 

Class 36: Leasing of real estate; real estate agencies; real estate management; apartment house management; apartment house rental; accommodations; rental of offices (real estate); sale of commercial housing; real estate brokerage; real estate appraisal; housing agencies; management of real estate assets, funds, finances and investments.

Class 38: Transmission of messages; telephone services; telephone communications; communications by computer terminals; computer aided transmission of messages and images; facsimile services; rental of message sending apparatus; rental of fax machines; rental of modems; rental of telecommunication equipment; rental of telephones; providing telecommunications connections to a global computer network; teleconference services; providing user access to a global computer network (service providers); rental of access time of access to global computer network; voice message service; digital file transmission.

Class 41: Conducting seminars in the field of international trade; organization and hosting of cultural and educational fairs, exhibitions, displays, conventions, conferences and workshops in the field of international trade; translation services; language interpretation services.

Class 42: Association services; namely, fostering and promoting world trade and international business relationships.

Class 43: Accommodation; catering (food and drink); café; cafeteria; restaurant; hotel; self-service restaurant; snack bars; bar.

Latvian trade mark registration M 64 421

Class 35: Organization of fairs, exhibitions, conferences and trade missions for commercial or advertising purposes; economic forecast preparation, consultation on commercial cooperation, also on import and export matters; market research; commercial activity research; secretary and document copying services, answering machine services on behalf of third parties; trade and commercial activities related to provision of statistical information and other comparable information that is included in this class; distribution of advertising materials and advertising souvenirs; promotion of goods and services of third parties; online provision of information from databases on international trade.

Class 36: Consultations on international trade related to residential real estate management; consultations on international trade related or residential real estate development that is included in this class, rent or premises for meeting, office work and guest accommodation.

Class 38: Telephone, e-mail and internet communication services; transmission of commercial information via electronic communication network; transmission of information and images using computers; ensuring private electronic communication networks for subscribers; provision of videoconferences with equipment and accessories, electronic billboard services on the internet ensuring allowing other persons to lace this information on goods and services; ensuring access to the internet via rented lines.

Class 41: Organization of seminars in the field of international trade and/or development and management of real estate where the persons related to international trade are located; organization of cultural and education fairs, exhibitions, conferences and seminars related to international trade and guest accommodation as regards participants of these events; translation services, interpretation services.

Class 42: Holding web sites of third parties on the server for global computer network needs.

Class 45: Consultations not related to commercial activities on human culture, belief and lifestyle differences, consultations on business etiquette and protocol matters.

The contested services are the following:

Class 35: Commercial management assistance in relation to franchises; business management and administration; business or commercial management assistance; exhibitions for commercial or advertising purposes; statistical-information services; market research services; advertising agencies; import-export services; import or export.

Class 37: Installation services; building construction; trouble-shooting services.

Class 41: Education and entertainment; arranging congresses or sporting, cultural or educational activities; coaching; publication of texts, other than publicity texts; publication of magnetic, optical and other similar data carriers bearing musical or audio-visual recordings.

Class 42: Scientific or technological services, or research or design relating thereto; industrial analysis or research services; design or development of computers or computer software programs; legal services.

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

The term ‘namely’, used in the opponent’s list of services, namely in Class 42 of some of its trade marks, to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not 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 services in Class 35

The contested commercial management assistance in relation to franchises; business management are included in, or overlap with, the opponent’s commercial management (in particular covered by the opponent’s Italian trade mark No 1 217 072). They are identical.

The contested business administration; business or commercial management assistance are included in, or overlap with, the opponent’s commercial affairs (in particular covered by the opponent’s Italian trade mark No 1 217 072). They are identical.

The contested statistical-information services overlaps with the opponent’s provision of trade and business statistics and other comparable information (covered, inter alia, by the opponent’s Cypriot and Maltese trade marks No 80 709 and No 51 525, respectively). They are identical.

The contested exhibitions for commercial or advertising purposes overlap with the opponent’s organisation of trade fairs, exhibitions for commercial or advertising purposes (covered, inter alia, by the opponent’s Cypriot and Maltese trade marks No 80 709 and No 51 525, respectively). They are identical.

The contested market research services; advertising agencies are included in, or overlap with, the opponent’s advertising management (in particular covered by the opponent’s Italian trade mark No 1 217 072). They are identical.

The contested import-export services; import or export are similar to the opponent’s business consultation in relation to import-export, and other business consultancy. The services are complementary to each other as they concern import-export services. They may coincide in their providers and targeted public. 

Contested services in Class 37

The contested installation services; building construction are identically contained in both lists of services (in particular the opponent’s Italian trade mark No 1 217 072)

The contested trouble-shooting services consist of a problem solving, often applied to repair failed products or processes on a machine or a system. These services are similar to the opponent’s industrial planning and development of hardware and computer software (in particular covered by the opponent’s Italian trade mark No 1 217 072), as they might originate from the same undertakings involved in diagnosing of software/hardware problems and solving them. They may also coincide in their relevant publics and distribution channels and it cannot be excluded that they serve the same global purpose of problem solving.

Contested services in Class 41

The contested entertainment; arranging sporting, cultural or educational activities are identically contained in both lists of services (in particular the opponent’s Italian trade mark No 1 217 072), albeit with a different wording.

The contested education overlaps with the opponent’s instruction. They are identical.

The contested arranging educational activities; coaching; arranging congresses activities overlap with the opponent’s organization and hosting of cultural and educational fairs, exhibitions, displays, conventions, conferences and workshops in the field of international trade. They are identical.

The contested publication of texts, other than publicity texts; publication of magnetic, optical and other similar data carriers bearing musical or audio-visual recordings are similar to a low degree to the opponent’s entertainment as these services may coincide in their distribution channels and publics and may have a complementary character to each other.

Contested services in Class 42

The contested scientific or technological services, or research or design relating thereto overlap with the opponent’s scientific and technological services and research services and planning for these relating services (in particular covered by the opponent’s Italian trade mark No 1 217 072). They are identical.

The contested industrial analysis or research services are included in the broad category of the opponent’s analysis and research (in particular covered by the opponent’s Italian trade mark No 1 217 072). They are identical.

The contested design or development of computers or computer software programs are included in, or overlap with, the opponent’s industrial planning and development of hardware and computer software (in particular covered by the opponent’s Italian trade mark No 1 217 072). They are identical.

The contested legal services are identically contained in both lists of services (in particular the opponent’s Italian trade mark No 1 217 072).

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 services found to be identical or similar to different degrees are mostly directed at professional public with expertise in relevant areas, business, installation and construction, education and training, scientific and technological research and analyses, etc. Although some of the services may target the general public, the Opposition Division considers that this public is still well-informed and observant and reasonably circumspect; furthermore, this public is considered to have a basic knowledge of English related to the above commented commercial sectors and for some of the reasons mentioned in section c) below.  

Furthermore, the public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased services. It has to be noted that where financial consequences are concerned, the degree of attention will be heightened (especially, some of the services in Classes 35, 37 and 42).

3. The signs

WORLD TRADE CENTER
Earlier trade marks	Contested sign

The relevant territories are Cyprus, Denmark, Italy, Latvia and Malta.

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 marks are the word marks ‘WORLD TRADE CENTER’ and the contested sign is a figurative mark consisting of a fanciful figurative element followed by the words ‘TRADE CENTER’ written in standard upper case letters and with the much smaller expressions ‘SMART COMMUNITY’ depicted above, in the left corner, and ‘GROWING TOGETHER’ in the right part underneath.  

The elements ‘TRADE CENTER’ incorporated in the signs will be associated by the entire relevant public with a ‘building where particular activates such trade and/or business negotiations take place’. This is once, due to the fact that the verbal elements may have identical or close equivalents in the relevant languages, for example ‘centrs’ in Latvian, ‘centro’ in Italian, ‘center’ in Danish, and second, due to the common use of these basic business English words, ‘trade’ and ‘center’ (or ‘centre’), in the relevant commercial fields. Since the relevant services are mainly business-related activities and highly specialised services in other particular areas, certain comprehension of English has to be considered for the relevant (professional) public. In addition, the market reality must be also reflected by the assessment of the signs. Nowadays, even the general public in the relevant territories has a global understanding of the expression ‘TRADE CENTER’ on its own as a modern building or complex of buildings that comprises business offices and stores (similarly to shopping or commercial centre). In such case, the relevant public both, the general and the professional public, will understand the character of the reference as an internationally used and common expression, as long as it concerns the relevant services mentioned above. For these reasons, the entire expression ‘trade center’ present in both signs is considered non-distinctive in relation to all the relevant services, as a ‘trade centre’ will be understood by the public as a facility that provides the relevant services or at least the connection to the businesses in the relevant sectors.    

The word ‘WORLD’ in the earlier mark will be understood by a significant part of the relevant public as an adjective describing the geographical scale of the expression that follows it, namely as global, concerning the entire planet Earth. This word is also considered weak on its own as it may refer to the character of the services or facilities as globally accessible/ available.    

The Opposition Division further considers that the elements ‘smart community’ of the contested sign will be understood in their entirety as they combine basic business English words with a common use in the everyday language or in the business area, namely ‘smart’ as ‘clever or bright’ and ‘community’ as ‘a group of people of a particular area or place’. Bearing in mind that all the relevant services may be focused on the provision of services addressed to ‘smart people’, this element is weak for all the relevant services. The elements ‘growing together’ may be understood by the relevant public to the extent that it possesses a certain level of English and will be perceived as a laudatory logo.  

The figurative element and the verbal elements ‘TRADE CENTER’ in the contested sign are the dominant element as they are the most eye-catching elements. On the contrary, the elements ‘smart community’ and ‘growing together’ are much smaller and barely readable on the background.

Visually, the signs coincide in the elements ‘TRADE CENTER’. However, they differ in their remaining words, namely the first word ‘WORLD’ in the earlier marks, as well as in the additional smaller expressions in the contested sign and further in its figurative element. Therefore, bearing in mind the non-distinctive character of the expression ‘TRADE CENTER’ in which the signs coincide, as well as the different beginnings of the earlier signs, they are considered visually similar to a low 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 words ‘TRADE CENTER’, present identically in the signs. The pronunciation differs in the sound of the additional word ‛WORLD’ of the earlier marks with no counterpart in the contested sign, as well as in the additional expressions in the contested signs, to the extent that they may be pronounced. Therefore, taking into account the lack of distinctiveness of the common expression, as already referred to above, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Bearing in mind that the signs will coincide only in the concept of ‘a trade centre’ that was considered non-distinctive in relation to the relevant services and taking into account that they contain also additional elements with weak or with no meaningful concepts for the relevant public, the signs cannot be considered 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.

4. Reputation of the earlier marks

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

According to the opponent, the earlier trade marks have a reputation in Cyprus, Denmark, Italy, Latvia and Malta.

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 and 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 08/01/2014. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in Cyprus, Denmark, Italy, Latvia and Malta 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 for all the relevant services covered by the opponent’s marks.  

In order to determine the marks’ 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 marks, the intensity, geographical extent and duration of their use, and the size of the investment made by the undertaking in promoting them.

For reasons of a coherent assessment and consistence in the analysis of recognition of the opponent’s marks (both registered and non-registered) by the relevant public, the Opposition Division will refer in this section to all the evidence submitted by the opponent in order to substantiate any of its claims of enhanced distinctiveness/reputation, well-known character or goodwill of its earlier rights. Therefore, the description/listing of the evidence will not be restricted only to the territories of Cyprus, Denmark, Italy, Latvia and Malta but will include all the relevant territories.

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. Therefore, the evidence consists, in particular, of the following documents:

Witness statement by the Associate Counsel of the WTCA, Lindsay Kassof, including the following exhibits:

• LK 1: printouts to the opponent’s official website, as well as references to few annual meetings that have been organised in Europe (Belgium, France, the United Kingdom, etc.) throughout the years, accompanied by picture material of the events; however, it is noted that some of the evidence is not dated and/or not relevant to the current proceedings as it concerns territories outside of the European Union (for instance, Hong Kong);
• LK 2 and LK 3: extracts containing a list of the WTC (World Trade Center) facilities globally spread on different continents, including in the territory of Europe in over 90 cities; a fact sheet has also been provided to attest that  information;
• LK 4: overview of the Membership Directory published in booklets since 1992, where the use of the trade mark ‘WORLD TRADE CENTER’ may be seen through the pages; the mark is often shortened to WTC; the overviews make tracks of the WTSC Members and the geographical extent of the association throughout the years, from 1996 to 2011;
• LK 5: a press release, produced by www.wtca.org, entitled ‘The world trade centers association remembers 9/11’;
• LK 6: extract from www.wtca.org with an article published in 2014, entitled ‘United Nations Renews WTCA’s NGO Status’, where the special consultative status of the opponent by the United Nations was commented on;
• LK 7: a sample of a license agreement containing, inter alia, sections defining the advertising, initiation fee and membership conditions of joining the WTCA (internal documents);
• LK 8: an extract concerning the application requirements for the WTC membership application process;
• LK 9: a copy of the Guidelines for Membership of WTCA published in 1988;
• LK 10: extracts containing an overview of the Self-assessment guide for meeting qualities and WTCA standards, as well as WTCA Development and Certification Guide valid for all  certifications 2013;
• LK 11: extracts illustrating international events organised by or with the contribution of the WTC, inter alia, the following:

• Vienna spring meeting materials, April 15-18, 1996;
• ART The Hague, 2013;
• TUHESFO 2013, Civil Aviation and Airport Equipment’s Trade Show;
• WTCA General Assembly Shaping Global Growth, 27-30/04/2014, Bucharest, Romania;
• Made in Cyprus Exhibition 9-11/05/2014;
• Promoting World Trade Centers MIPIM International Property Market, March, 2002, Cannes, France;
• OLIO Officina Food Festival, January, 2014, in Milan, Italy;
• European crossroads of World trade challenge and tradition, April 1997, Leipzig;
• 2002 Spring Meeting, Sofia, Bulgaria.

• LK 12 – 19: information and reports about events, especially referred to as business events that have taken place in the territory of the EU:

• European World Trade Center’s meeting, Lausanne, France, January, 1995;
• Spring Meeting, Friuli Venezia Giulia, Italy, 2000;
• Oslo Conference on Peace stability through Trade, Norway (EU public claimed), 2007;
• 40th General Assembly of WTCS, October, Barcelona, Spain, 2009;
• WTCS Marks 22nd Successful Year at MIPIM, Cannes, France, 2014;
• Investment and Trade at WTC, October, Bucharest, Romania, 2014;

• LK 20: a copy of a booklet, entitled ‘Benefits of Membership in the WTC organisation;
• LK 21 and 22: WTCA Newsletters and promotion materials produced by the opponent and the opponent’s licensees on a monthly base and giving detailed information about events, activities and developments of the centres, in particular for the following territories:

• Belgium: extracts with information about WTC Antwerp and the WTC regional Meeting that took place in Antwerp in 2011;
• Bulgaria: extracts from internet with a reference to ‘Interpred WTC Sofia’, namely ;  
• Croatia: references are made to exhibitions and conferences in Zagreb, 2001, for which the opponent is represented as one of the organisers;  information about WTC Zagreb and a its newsletter dated 2001, as well as a list of events for 2002;
• Estonia: with a reference to WTC Tallinn;
• Finland: with a reference to WTC Turku; the set provides bulletins in English, dated between 2004 and 2013, that contain business news and trends also related to the other countries, as well as local editions published by the opponent’s associate; a reference to WTC Helsinki;
• France: most reference to WTC Lille, including different editions of Lille Newsletter between 2002 and 2005, submitted in French; references to  Lyon and Marseille congress and conference centers, as well as to WTC Nice Sophia – Antipolis, Pennes Bretagne, etc (for the years 2012 and 2013);
• Germany: references to WTC Dresden and articles published at wtc aktuell, in 1997;
• Ireland: extracts with information about the WTC Dublin;
• Italy: references to WTC Basilicata, WTC Genoa, WTC Fiera Trieste (documents submitted in English and Italian);
• the Netherlands: extracts from the internet paegs, brochures and magazines (WTCA magazine, Spring, 2011) with references to WTC Amsterdam, WTC Almere Area, WTC Twente, WTC Heerlen/Aachen, WTC Leeuwarden;
• Poland: references to WTC Poznan and WTC Warsaw;
• Romania: references to WTCA Bucharest in the article ‘20 years shaping global growth’, published at www.wtcb.ro;
• Spain: references to WTC Almeda park, WTC Barcelona, WTC Zaragoza, for which the figurative trade marks  and  have been used by the opponent;
• Sweden: references to WTC Goteborg, WTC Malmo, WTC Stockholm;
• United Kingdom: an article published at www.hu17.net giving information about an international conference in WTC Hull, dated 29/09/2004, accompanied by other supporting articles such as:

• www.commerce-industry.co.uk, published on 26/09/2014, Hull’s status as an international business destination is coming under the spotlight’   
• www.blmforum.net, dated 29/09/2014, Global business leader to view Hull WTC’s claim;
• www.hulldailymail.co.uk, dated 06/10/2014, Hull in running to host World Trade Centers’ general assembly in 2018.

• LK 23-24: extracts from the official websites, including of different associates of the WTCA, providing corporative and other type of information;
• LK 26- 27: printouts from the Facebook and LinkedIn account of the WTC illustrating the number of followers of the company;
• LK 28 and LK 29: references to the public recognition of the World Trade Center Association and its founder, Guy F.Tozzoli, who was nominated for Nobel Peace Prize, as well as to other prizes awarded to the WTCA such as the Trade Promotion Award at World Trade Week 2011;
• LK 30: an extract from the report: World Trade Center, A special report prepared for the WTCA, Global connections; 
• LK 32: a list with the opponent’s trade mark registrations worldwide;
• LK 35: extracts from the judgment of the Spanish Mercantile Court of Las Palmas de Gran Canaria in a decision of 24/11/2008, where the opponent’s trade mark and name ‘World trade center’ is considered internationally known due to its extensive use, promotion and publication.

• Annex 3: article, dated 01/05/1999, published at Entrepreneur, entitled ‘World Trading. Need a global network? Give this veteran a try’ with estimations of the opponent such as ‘the most valuable network’ and ‘largest trade organisation in the world’. However, the article gives information about the global network ‘WTC’ and not of the particular strength of the brand in the frames of the European Union. Furthermore, although a spill-over cannot be ruled out, the source is not clearly identified as an European Union media with a target group at the EU public but rather the American. Furthermore, although the article itself is slightly outdated (1999), the set contains extracts from an article published at www.Traveldailynews.asia, dated 14/12/2012. Nevertheless, it concerns the Asia and the Pacific areas, not relevant in the proceedings.  

Preliminary remarks

According to the second sentence of Article 76(1) EUTMR, in inter partes proceedings the Office is restricted in its examination to the facts, evidence and arguments provided by the parties. It follows that in assessing whether the earlier marks enjoy reputation, the Office may neither take into account facts known to it as a result of its own private knowledge of the market nor conduct an ex-officio investigation, but should exclusively base its findings on the information and evidence submitted by the opponent.

Furthermore it has to be pointed out that the relevant territory for establishing the reputation of the earlier mark is the territory of protection: the earlier mark must have a reputation in the territory where it is registered or claimed. Therefore, for national marks the relevant territory is the Member State concerned, whereas for EUTMs the relevant territory is the European Union. Furthermore, even if the evidence relates to an area beyond the territory of protection, the opponent’s claim must be examined for the territory of protection only. Similarly, the submitted evidence must specifically concern the relevant territory. For example, if the evidence relates to Asia or to the United States for instance, or to undefined regions, it will not be able to show reputation in the EU or in a particular Member State. Therefore, information concerning business activities and commercial results in the EU as a whole, or world-wide, is not appropriate for showing reputation in a specific Member State, if the relevant information does not concern the relevant territory. In other words, a ‘wider’ reputation must also be specifically proven for the relevant territory if it is to be taken into account.

With respect to the relevant point in time, it must be cleared up that materials filed with a view to proving reputation must be dated, or at least clearly indicate when the facts attested therein took place. Consequently, undated documents, or documents bearing a date added afterwards (e.g. hand-written dates on printed documents), are not apt for giving reliable information about the material time. Moreover, if the period elapsed between the latest evidence of use and the filing of the EUTM application is quite significant, the relevance of the evidence should be carefully assessed with respect to the market sector involved.

Analysis of the evidence and conclusion

The global assessment of the evidence submitted by the opponent shows as a whole that the opponent’s trade sign and business name ‘WORLD TRADE CENTER’ has been intensively used in relation to establishment and operation of business facilities and particularly in licensing agreements with real estate developers, businesses and communities to create such business centres for fostering and promoting world and international trade and negotiation. It is obvious from the evidence, that the opponent, as well as its associates and members of the WTCA, have made significant investments in advertising and event management involving the sign ‘WORLD TRADE CENTER’. It cannot be disputed that the opponent’s organisation has achieved a leading position in the business field worldwide and that its name is associated with a prestigious and high-quality standardised business environment.  

However, the evidence provided by the opponent in order to substantiate its claim of reputation (or enhanced distinctiveness) in particular Member States of the European Union, namely Cyprus, Denmark, Italy, Latvia and Malta, contains serious deficiencies and gaps, which cannot be overcome by the solid amount of materials submitted in relation to the WTCA as a whole. The Opposition Division notes that the opponent failed to prove any recognition of its brand for these particular territories and references to countries such as Cyprus, Denmark, Latvia and Malta are generally missing along or are very scarce. Apart from some references to events collaborated by the opponent (for instance the exhibition Made in Cyprus in 2014), as well as some annual meetings of the opponent’s associates (for instance Spring Meeting in 2000) or to the opponent’s newsletters and promotion materials distributed among the associates, the evidence regarding these territories is insufficient to demonstrate anything further than the use of the trade marks in Cyprus and Italy.

The Opposition Division considers that the opponent did not succeed in following a consistent approach and a line of argumentation by demonstrating recognition by the relevant public in any of these particular territories, as claimed. The opponent has focused instead on providing diversified pieces of information, mostly produced by the opponent itself, which suffice only to show some use of the sign in the particular area or they refer to the European Union as a whole and do not provide a detailed view of the Member States concerned. Although, in principle, all relevant documents have to be taken in conjunction with each other, this is not the case in the relevant proceedings, where the enhanced distinctiveness/reputation or the well-known character of the trade marks is to be examined as separately claims for each territory on its own. In that sense, the Opposition Division notes that by examining the relevant evidence the approach taken up in the assessment is based on piece by piece evaluation, in respect to each Member States found to be relevant and conclusions are drawn only in respect to that territory and not to the reputation/well-known character of the mark ‘WORLD TRADE CENTER’ as a whole (in the frame of the EU or world-wide). Furthermore, evidence submitted in relation to a particular Member State cannot compensate the lack of necessary information or data with respect to another Member State, nor would evidence demonstrating the global perception of the brand serve on concluding on the public recognition in a particular area.

Concretely on the evidence, the Opposition Division points out that a significant part of it is not dated at all or is outdated since a great time period has elapsed between the moment of interest for the proceedings and the moment dated in the past (for instance, more than 10 or 15 years elapsed). Furthermore, in some of the evidence the opponent merely indicates the existence of its trade centre facilities in particular territories and does not expand on the public perception in these territories (illustrated use of the trade mark, but not recognition). Some of the evidence concerns territories outside of the relevant extent such as Asia and the USA and cannot be taken into account.

Finally, most of the evidence originates from the opponent (internal documents, internet extracts from the opponent’s pages, publications and promotional materials distributed within the WTC association, etc.) and is not accompanied by any additional materials from third parties that would verify its probative character. In principle, information deriving directly from the opponent is unlikely to be enough on its own, especially if it only consists of opinions and estimates instead of facts, or if it is of an unofficial character and lacks objective confirmation, as for example when the opponent submits internal memoranda or tables with data and figures of unknown origin. In the present case, the newsletters and other materials issued by the opponent and the opponent’s associates (LK 21-24) cannot on their own constitute an objective source of information concerning the public perception of the opponent’s signs. In addition, account must be also taken of the fact that this type of evidence including internal publications is mainly intended to promote the image of the brand and the relevant information therein must be treated with caution.

As LK 35, the opponent provides a judgment of the Spanish Mercantile Court of Las Palmas de Gran Canaria (dated in 2008) that confirms the opponent’s sign reputation in the relevant territory; however, this has to be carefully addressed and examined, especially taken into account that it is not a recent case-law. Although the probative character of national decisions will be considerably enhanced, it is not clear to the Opposition Division which factors have been taken into account by concluding on that decision and to which extent they might be applied in the present proceedings. Consequently, the probative value of this decision cannot be decisive on its own and should be assessed in a conjunction with other evidence.

Nevertheless, as already implied above, apart from illustrating some use in relation to some of the marks, the evidence submitted does not provide any indication of the degree of recognition by the relevant public of the trade marks registered in the territories of Cyprus, Denmark, Italy, Latvia and Malta. The Opposition Division concludes that the opponent failed to prove that its trade marks have an enhanced distinctiveness/reputation or are well-known in the territories relevant for this section of the decision.  

Consequently, the distinctiveness of the relevant trade marks in relation to the relevant services will be seen as below the average as a whole, for the reasons explained above in section c).

5. Global assessment, other arguments and conclusion

The relevant services are partly identical and partly similar to different degrees. The relevant degree of attention will vary between average and high and, although general public may be also addressed, the public concerned is considered rather professional public.

As stated above, the similarities between the signs consist in the coincidence of elements, namely ‘TRADE CENTER’, which are not-distinctive for the relevant public in relation to the services, as listed above. Therefore, these similarities cannot be on their own sufficient to lead to a likelihood of confusion on the part of the public. Furthermore, as concluded above, the earlier marks are endowed with a rather low distinctiveness. In the context of a complex mark account must be taken of the fact that the overall impression created by the signs is a result of the perception of the different components altogether. According to the EU case-law, the target public will not generally consider a descriptive element forming a part of a complex mark as the distinctive and dominant element of the overall impression conveyed by the mark (22/05/2008, T 205/06, Presto! Bizcard Reader, EU:T:2008:163, § 53). Therefore, although the remaining differentiating verbal elements of the conflicting signs in the present case, the word ‘WORLD’ in the earlier mark and the additional expressions in the contested sing, have not been considered particularly distinctive in relation to the services, these components of the marks, as well as the figurative element in the contested sign, taken as a whole, will be capable to convey different impressions by the consumers.  The relevant public will see the common part ‘TRADE CENTER’ as a generic indication of a business or other type of a facility, as explained in section c) and perceive the contested sign as a different  undertaking with no economic relation to the opponent’s ‘WORLD TRADE CENTER’s marks or association.  

In addition, it has to be mentioned that the opponent refers to previous decisions of the Office to support its arguments, namely Opposition Decision No B 636 979 of 19/12/2005, World Trade Center Barcelona versus Sant Cugar de Negocis S.L. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above, even taking into account the identity of some of the services, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected, as long as it is based on Article 8(1)(b) EUTMR and on the earlier rights referred to above.

The opponent has also based its opposition on the Italian trade mark registration No 1 460 229 for the figurative mark registered for services in Classes 36, 37 and 42.

The other earlier right invoked by the opponent is less similar to the contested mark. This is because it contains a further figurative element which is not present in the contested trade mark. Moreover, it covers essentially the same or a narrower scope of the services. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.

For the sake of completeness the Opposition Division will comment again on the distinctiveness of the earlier mark. It must be stated, as far as the nature of use of the sign ‘WORLD TRADE CENTER’ as such is concerned, that the sign is referred to in the evidence analysed above in its entirety, usually bearing the location of the facility, and shortened to ‘WTC’ for the purposes of an easier reference (for instance WTC Barcelona, WTC Genoa, WTC Fiera Trieste, etc.) Consequently, even if the Opposition Division assumes a certain degree of recognition of the sign ‘WORLD TRADE CENTER’, this recognition of the relevant public will concern the entire expression ‘WORLD TRADE CENTER’ and not parts of it, in particular no recognition can be attributed to the descriptive term ‘TRADE CENTER’ incorporated in the sign. Account must be especially taken of the fact that the earlier marks’ beginnings contain the different word ‘WORLD’ with no counterpart in the contested sign. The opponent must be assured in such scenario that the protection granted to its earlier rights, regardless if registered or not, is directed to the perception of the word ‘WORLD’ in a combination with ‘TRADE CENTER’ and not of the latter per se. Therefore, even if the sign ‘WORLD TRADE CENTER’ as a whole may indicate to the particular association and state a certain origin of the company, this is not the case for the expression ‘TRADE CENTER’ (or its equivalents into the different languages) on its own. As previously said, it is a term with a common use in both, the everyday language and the professional fields, and shall not be monopolised by any particular undertaking operating on the market.      

REPUTATION – ARTICLE 8(5) EUTMR

The opponent invoked Article 8(5) EUTMR in relation to all its registered and applied marks that have been examined above under Article 8(1)(b) EUTMR.

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

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

• The signs must be either identical or similar.

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

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

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

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.

1. Reputation of the earlier trade marks

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

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.

1. The right under the applicable law

Firstly, it has to be noted that in the course of the proceedings, the opponent refrained from commenting on the relevant applicable law in the Member States, for which it claims to own non-registered trade marks, and focused its observations analyses on the passing-off in the United Kingdom. For the sake of completeness, the Opposition Division will comment on the legal consequences of the opponent’s decision to limit its analyses to that particular mark and not comment on the remaining rights.

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.

In the present case, 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 Member States mentioned by the opponent. It is not sufficient to make a general reference to the national legislation, as the opponent did in its observations.

Therefore, the opposition is not well founded under Article 8(4) EUTMR, as long as it is based on earlier non-registered trade marks in Austria, Bulgaria, Benelux, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Malta, Poland, Portugal, Romania, Slovakia, Slovenia, Spain and Sweden.

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

Passing-off

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

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

Secondly, the opponent must demonstrate that the applicant’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.

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

For the purposes of proving the acquisition of that right, the opponent must prove that it enjoys goodwill for the services claimed under its mark.

A reference is made to the evidence listed in section d) under the part LIKELIHOOD OF CONFUSION – Article 8(1) EUTMR) of this decision. In principle, goodwill refers to the value of the reputation attached to a trading asset such as, as in this case, a trade mark. Goodwill does not mean ‘reputation’ or ‘enhanced distinctiveness acquired by use’ within the meaning of the EUTMR. Goodwill is normally proved by evidence of, inter alia, trading activities, advertising and consumers’ accounts. Genuine trading activities, which result in acquiring recognition by the public and gaining customers, are usually sufficient to establish goodwill. Even small businesses can enjoy goodwill. Value may be added to a business and goodwill generated without attaining the level of recognition needed to establish enhanced distinctiveness or reputation. However, it is necessary to prove trading activity above a minimum threshold. Moreover, commercial trading activities have to relate specifically to the goods or services sold under the earlier right on the market in the United Kingdom in order to establish goodwill and not to the opponent’s commercial trading activities in general.

In the present case, although the opponent demonstrates some use of the mark ‘WORLD TRADE CENTER’ in the United Kingdom (for instance in LK 21 and 22), this use is not particularly bound to any specific group of services, as claimed by the opponent, namely services in Classes 35, 36, 37, 41, 42 and 43. The references rather contain general information, from which it is difficult for the Opposition Division to conclude on the goodwill of the opponent in that relevant territory.  As result, on the basis of the evidence illustrated above, it is considered that the opponent fails to demonstrate the goodwill of the mark for these relevant services. Since proving of goodwill is one of the necessary conditions for the passing-off law to be applied, the opposition must be rejected also on this ground.      

Therefore, the opposition is not well founded under Article 8(4) EUTMR.

WELL-KNOWN TRADE MARKS IN CONJUCTION WITH ARTICLE 8(2)(c) EUTMR

In its notice of opposition, the opponent claims to have a well-known marks in the sense of Article 6bis of the Paris Convention for the sign ‘WORLD TRADE CENTER’ in Austria, Bulgaria, Benelux, Croatia, Cyprus, Czech republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Malta, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United Kingdom.

According to Article 8(2)(c) EUTMR, for the purposes of Article 8(1) EUTMR ‘earlier trade marks’ means:

trade marks which, on the date of application for registration of the European Union trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the European Union trade mark, are well known in a Member State in the sense in which the words ‘well known’ are used in Article 6bis of the Paris Convention.

Article 8(2)(c) EUTMR, in general, defines the earlier trade mark only ‘for the purposes of paragraph 1’ and, therefore, does not provide an independent relative ground for refusal. Thus, the grounds for refusal and opposition are those provided by Article 8(1)(b) EUTMR.

In order for Article 8(2)(c) EUTMR in conjunction with Article 8(1)(b) EUTMR to be applicable, the following has to be established:

a) the earlier mark was well-known in the relevant territory on the date when the contested EUTM application was filed and

b) because of identity with or similarity of the contested mark to the earlier well known 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 relevant territory.

The Opposition Division refers to the evidence and findings in section d) (LIKELIHOOD OF CONFUSION – Article 8(1) EUTMR) of this decision. As implied above, the evidence submitted by the opponent does not suffice to prove the well-known character of the sign ‘WORLD TRADE CENTER’ for any of the relevant territories for the assessment. Therefore, since one of the necessary conditions is not fulfilled, namely the marks are not well-known, the opposition must be rejected also insofar as it is based on Article 8(2)(c) EUTMR in conjunction with Article 8(1)(b) EUTMR for the unregistered word marks ‘WORLD TRADE CENTER’ in Austria, Bulgaria, Benelux, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Malta, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United Kingdom.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Volker MENSING	Patricia LOPEZ FERNANDEZ DE CORRES	Liliya YORDANOVA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.