Decision on Opposition No B 2 752 866 page: 3 of 5
Well-known character of the earlier trade mark
Reputation implies a knowledge threshold which is reached only when the earlier
mark is known by a significant part of the relevant public for the goods or services it
covers. The relevant public is, depending on the goods or services marketed, either
the public at large or a more specialised public.
In practical terms, the threshold for establishing whether a trade mark is well-known
or enjoys reputation is usually the same.
In the present case the EU was designated in the contested international registration
on 14/03/2016. Therefore, the opponent was required to prove that the trade mark on
which the opposition is based had become well-known in Poland, the United
Kingdom and Luxembourg prior to that date. The evidence must also show that the
well-known character was acquired for the above listed services in Class 36 for which
the opponent has claimed that the mark is well-known.
In order to determine the mark’s level of recognition, 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 16/08/2016 the opponent submitted the following evidence:
Issuing document of Aria Structured Investments SICAV-SIF dated January
2012. The document specifies that Aria Structured Investments is a
Luxembourg multi-compartment investment company with variable capital
organised as a specialised investment fund in the form of a corporate
partnership limited by Shares.
Document entitled ‘Memorial Journal Officiel du Grand-Duché de
Luxembourg’ dated 13/09/2007. This publication from the Official Journal of
Luxembourg concerns commercial companies and associations. Aria
Structured Investments is listed together with the company’s articles of
association in English and French.
The Opposition Division finds that the evidence submitted by the opponent does not
demonstrate that the earlier trade mark has a well-known character.
The evidence submitted merely concerns the company Aria Structured Investments
SICAV-SIF. The issuing document which gives information on the company and
describes its activities is intended to encourage potential shareholders to invest in the
company whereas the Articles of Association contain the purpose of the company as
well as the duties and responsibilities of its members. There is no information in the
documents submitted referring to actual trade mark awareness and public’s
recognition of the mark in relation to any of the services in Class 36.
Under these circumstances, and in the absence of independent and objective
evidence that would enable solid conclusions to be drawn about the degree of
recognition of the earlier mark by the relevant public in relation to services in
Class 36, the Opposition Division finds that the evidence submitted by the opponent
cannot be conclusive of the well-known character of the mark on its own because it
does not provide information about the actual level of awareness in respect of the
trade mark or the market share held by the mark and is, therefore, clearly not
sufficient to establish all the facts required to safely conclude that the earlier mark is