DECISION

of the Second Board of Appeal

of 11 April 2016

In Case R 1345/2015-2

Nippon Denshin Denwa Kabushiki Kaisha (Nippon Telegraph and Telephone Corporation)
Tokyo Japan	Opponent / Appellant

represented by Marks & Clerk LLP, London, United Kingdom

v

Nordisk Transmissionsteknik AB
Kallered Sweden	Applicant / Respondent

represented by Advokatfirman Vinge KB, Gothenburg, Sweden

APPEAL relating to Opposition Proceedings No B 2 326 232 (European Union trade mark application No 12 345 401)

The Second Board of Appeal

composed of T. de las Heras (Chairperson and Rapporteur), C. Negro (Member) and H. Salmi (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 14 November 2013, Nordisk Transmissionsteknik AB (‘the applicant’) sought to register the figurative as amended

for the following list of goods and services:

Class 6 ‒ Chain guide rails; ball screws; threaded metal bars; angle joints; couplings; gear boxes;

Class 7 ‒ Components for mechanical transmission, namely, roller chains, conveyor chains, leaf chains, sprockets, timing belts, V-belts, conveyor belts, table top chains, worm wheels, worm screws, timing belt pulleys, gears, racks, V-belt pulleys, bushings being parts of machines, welding hubs, locking assemblies, bearings, cam clutches, chain tensioners, trapezoidal screws, spline shafts/spline hubs, polygon shafts, double set collars, set collars, ball couplings, clevises, torque limiters, electric motors;

Class 37 ‒ Repair, installation and service of chains, electric motors and gear boxes.

2. The application was published on 11 December 2013.

3. On 5 March 2014, Nippon Denshin Denwa Kabushiki Kaisha (Nippon Telegraph and Telephone Corporation) (‘the opponent’) filed an opposition against the registration of the published trade mark application for as amended goods and services. 

4. The grounds of opposition were those laid down in Article 8(1)(b) and (5) EUTMR.

5. The opposition was based on the following earlier right:

• EUTM No 12 138 442 ‘NTT’ filed on 13 September 2013 and registered on 22 January 2014 for the following goods and services:

Class 9 ‒ Electronic agendas; bar code readers; encoded magnetic cards; central processing units [processors]; chips [integrated circuits]; computer game software; computer keyboards; computer memory devices; computer operating programs, recorded; computer peripheral devices; computer programmes [programs], recorded; computer programs [downloadable software]; computer software, recorded; computers; data processing apparatus; optical discs; disks, magnetic; disk drives for computers; electronic notice boards; electronic pens [visual display units]; electronic pocket translators; electronic tags for goods; encoded identification bracelets, magnetic; magnetic encoders; floppy disks; identity cards, magnetic; integrated circuit cards [smart cards]; integrated circuits; intercommunication apparatus; interfaces for computers; juke boxes for computers; laptop computers; light-emitting diodes [LED]; magnetic tape units for computers; magnetic tapes; microprocessors; modems; monitors [computer hardware]; monitors [computer programs]; mouse [data processing equipment]; mouse pads; pocket calculators; printers for use with computers; optical character readers; readers [data processing equipment]; scanners [data processing equipment]; semi-conductors; amplifiers; answering machines; antennas; anti-interference devices [electricity]; camcorders; cassette players; cell phone straps; compact disc players; digital photo frames; DVD players; electric installations for the remote control of industrial operations; facsimile machines; global positioning system [GPS] apparatus; hands free kits for phones; head cleaning tapes [recording]; headphones; juke boxes, musical; phototelegraphy apparatus; portable media players; portable telephones; radio pagers; radios; vehicle radios; radiotelegraphy sets; radiotelephony sets; audio and video receivers; telephone receivers; record players; telegraphs [apparatus]; television apparatus; navigation apparatus for vehicles [on-board computers]; video recorders; video telephones; coaxial cables; fibre [fiber (Am.)] optic cables; junction sleeves for electric cables; cables, electric; electric wires and cables; optical fibers [fibres] [light conducting filaments]; telegraph wires; telephone wires; wire connectors [electricity]; animated cartoons; compact discs [audio-video]; downloadable image files; downloadable music files; downloadable ring tones for mobile phones;

Class 38 ‒ Rental of access time to global computer networks; cable television broadcasting; radio broadcasting; television broadcasting; cellular telephone communication; providing internet chatrooms; communications by computer terminals; communications by fiber [fibre] optic networks; communications by telegrams; communications by telephone; electronic mail; facsimile transmission; information about telecommunication; news agencies; providing telecommunications connections to a global computer network; rental of facsimile apparatus; rental of message sending apparatus; rental of modems; rental of telecommunication equipment; rental of telephones; satellite transmission; videoconferencing services; transmission of digital file;

Class 42 ‒ Computer programming; duplication of computer programs; installation of computer software; maintenance of computer software; updating of computer software; computer software consultancy; computer software design; computer system analysis; computer system design; computer virus protection services; conversion of data or documents from physical to electronic media; creating and maintaining web sites for others; data conversion of computer programs and data [not physical conversion]; digitization of documents [scanning]; information technology [IT] consulting services; monitoring of computer systems by remote access; providing search engines for the internet; recovery of computer data; web site design consultancy; computer rental; hosting computer sites [web sites]; rental of computer software; rental of web servers; server hosting; software as a service [SaaS]; graphic arts design; industrial design; styling [industrial design]; consultancy in the field of energy-saving; scientific laboratory services; physics [research]; technical project studies; quality control; scientific research.

6. By decision of 11 May 2015 (‘the contested decision’), the Opposition Division rejected the as amended in its entirety and ordered the opponent to bear the costs. It gave, in particular, the following grounds for its decision:

Article 8(1)(b) EUTMR

Comparison of the goods and services

Contested goods in Classes 6 and 7

• The contested ‘chain guide rails; ball screws; threaded metal bars; angle joints; couplings; gear boxes and components for mechanical transmission, namely, roller chains, conveyor chains, leaf chains, sprockets, timing belts, V-belts, conveyor belts, table top chains, worm wheels, worm screws, timing belt pulleys, gears, racks, V-belt pulleys, bushings being parts of machines, welding hubs, locking assemblies, bearings, cam clutches, chain tensioners, trapezoidal screws, spline shafts/spline hubs, polygon shafts, double set collars, set collars, ball couplings, clevises, torque limiters, electric motors’ are used as components in automatic production and assembly systems in industrial factories and plants, and, as such, they are different from all the goods and services of the opponent. They are different in purpose and nature and have nothing in common with the goods and services in Classes 9, 38 and 42 on which the opposition is based. The fact that some devices may incorporate both mechanical and electronic components or parts does not make them similar, since the contested goods are mechanical products with specific purposes which will not normally be manufactured or provided by the same companies as the electronic goods and related services of the opponent. Therefore, these goods are considered dissimilar.

Contested services in Class 37

• The contested ‘repair, installation and service of chains, electric motors and gear boxes’ have nothing in common with the opponent’s goods and services in Classes 9, 38 and 42, since they have a different nature and purpose and are usually provided by different undertakings. They are, therefore, dissimilar.

• According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR has not been fulfilled, and the opposition must be rejected. This finding would still be valid even if the earlier mark were to be considered as enjoying an enhanced degree of distinctiveness.

Article 8(5) EUTMR

• The opponent states that its mark has been extensively used and has acquired reputation in relation to telecommunication services and other products and, because of this, the use of the contested mark for complementary or similar goods will be detrimental and will take unfair advantage of its reputation. However, as stated above, the products and services of the contested mark are dissimilar to those of the opponent and are not complementary, they target different industries and the target public of the opponent’s good and services is not exposed to the mark of the applicant, which targets a business public, specialised in a different sector of industry, mechanical goods. The goods are so far away that a sufficient link is not established between the respective goods and services in question. In the absence of a link in the mind of the public, the use of the applicant’s mark cannot be considered to take unfair advantage of or be detrimental to the reputation of the opponent’s mark. The public is unlikely to think that the applicant and the opponent are economically linked in some way. The opponent did not provide any other arguments or evidence which could support the conclusion that the use of the contested mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

• As regards the claim of the opponent of risk of likelihood of confusion, as stated above, the products and services are dissimilar and likelihood of confusion is not contemplated under Article 8 (5) EUTMR.

• Article 8(5) EUTMR is not intended to prevent the registration of all marks identical with or similar to a mark with reputation. According to established case-law, ‘once the condition as to the existence of reputation is fulfilled, the examination has to proceed with the condition that the earlier mark must be detrimentally affected without due cause’.

• In the present case, the opponent merely claims that use of the contested mark, being extensively used for a variety of goods and services, would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark. However, as explained above, there seems to be no good reason to presuppose that use of the contested mark will result in any such events occurring. Although potential detriment or unfair advantage cannot be completely excluded, this is, as seen above, not enough.

• As seen above, it has not been established that the use of the contested mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark as required by Article 8(5) EUTMR. As one of the necessary requirements is not met, the opposition must be rejected as not well founded under Article 8(5) EUTMR.

7. On 8 July 2015, the opponent filed an appeal against the contested decision, requesting that the decision be as amended set aside. The statement of grounds of the appeal was received on 11 September 2015.

8. In its observations in reply received on 3 December 2015, the applicant requests that the appeal be dismissed and to uphold the contested decision in its entirety.

Submissions and arguments of the parties

9. The opponent requests that the appeal be allowed, its opposition accepted in its entirety and that the applicant ordered to bear the costs. Its arguments may be summarised as follows:

Article 8(5) EUTMR

• The Opposition Division has failed to acknowledge or recognise that the earlier trade mark in support of the grounds of opposition consists entirely of the word ‘NTT’ in standard font. As stated in the opponent’s observations filed in the opposition proceedings, the earlier mark is highly visually, phonetically and conceptually similar to the contested mark ‘NTT GROUP logo’. The Opposition Division did not contest these arguments in the contested decision. The respective marks may be regarded as similar within the meaning of the provisions of Articles 8(1)(b) and 8(5) EUTMR. During the opposition proceedings, the opponent submitted various items of evidence demonstrating that the earlier mark had gained a reputation throughout the EU as a result of the broad and extensive use made of this mark, in relation to various goods and services, in a number of EU member states. The validity and weight of this evidence was not challenged in the contested decision. Therefore, it must be concluded that the evidence as filed was sufficient to establish the necessary reputation of the earlier registered mark within the EU as required under the provisions of Article 8(5) EUTMR.

• With regards to ‘encroachment upon reputation’, the evidence filed during the opposition proceedings clearly established that the opponent is a global telecommunications company and its mark ‘NTT’ enjoys an international reputation, profile and standing throughout the world, including the member states of the EU, in relation to these services (and related goods thereto). As a result of the substantial reputation of the earlier mark in the EU and globally, it stands to reason that the scope of any possible detriment and unfair advantage occurring in relation to the contested mark is highly likely to be heightened and/or enhanced. Consequently, the Opposition Division erred in not recognising the EU wide and international reputation of the earlier mark and, as a result, that any use in the EU of the mark ‘NTT GROUP logo’ by the applicant is likely to be perceived as use endorsed by or economically linked to the opponent, when this is clearly not the case. Furthermore, any promotion or sale of products or related services bearing the applicant’s mark ‘NTT GROUP’ in the EU will inevitably take unfair advantage of the earlier mark. Ultimately, any consumer in the EU who purchases or uses the applicant’s goods and/or services bearing its ‘NTT GROUP logo’ mark is highly likely to believe that these goods are somehow economically linked to the
  earlier mark, given the substantial reputation residing in this mark in the EU (and worldwide). This will undoubtedly act to the detriment of the opponent, bearing in mind that the opponent has no control over any such use by the applicant who will be able to trade off and take unfair advantage of the opponent’s reputation in which vast amounts of both time and money have been invested.

• There is no requirement for a likelihood of confusion and Article 8(5) must be applied equally in relation to similar and/or dissimilar goods and services, without any discrimination or distinction.

• A brief Internet search of the applicant’s website at http:/www.nttgroup.se/en/About-us has revealed that they offer various types of products in relation to mechanical transmission. Their website states that they currently have 60 employees which would suggest that the manufacture of these products is not labour intensive and the actual production is likely to be highly automated with a relatively small number of operators/employees controlling and managing the machinery.

• The opponent has actively used its mark in the manufacturing sector and other industrial sectors and its services (and goods) are used by various large European companies that could also be customers of the applicant. Exhibit MCA1 provides details of interviews conducted by the opponent with senior executives of some of the largest manufacturing companies in the EU, namely Audi, Daimler, Brose, Bosch, ThyssenKrupp, Opel, Witte Automotive and Volkswagen, who are all customers of the opponent.

• The precise scope of the services offered by the opponent in the manufacturing sector in the EU under its ‘NTT’ mark is further illustrated in the attached brochure titled ‘Manufacturing Consulting’. The brochure also provides individual testimonies from Senior Executives of various manufacturing companies in the EU which clearly illustrate the high level of valued service that the opponent provides in this sector. These include testimonies from BMW Group (pages 10 and 16), TRUMPF Homberger (page 12), FANUC EUROPE GmbH (page 14), eMORAIL (page 18), Andritz Inc. (page 20), Indesit (page 22) and Smurfit Kappa Group (page 24). Exhibit MCA2 provides full details of the contents of this brochure.

• The opponent has also been very prominent in marketing its goods and services to the manufacturing sector within the EU. Exhibit MCA3 provides details of its attendance at the BMW IT Messe in Munich in 201 1 in which the opponent’s services (and goods) provided under its famous ‘NTT’ mark were clearly advertised and promoted to numerous delegates attending from countries throughout the EU.

• As the opponent is a global company with a worldwide reputation, it also actively markets goods and services bearing the mark NTT in countries outside of the EU. Exhibit MCA4 provides details of its participation in the ITU Telecom event in Geneva, Switzerland. Events of this nature are normally also attended by various delegates from countries within the EU.

• The opponent has also actively promoted and marketed its mark ‘NTT’ on products which are used in the installation and servicing of computer equipment. Exhibit MCA5 provides details of these products as demonstrated at the ECCO Conference in 2011 (Geneva), 2012 (Amsterdam) and 2013 (London).

• The mark ‘NTT’ is used broadly by the opponent in relation to various transactions throughout the EU for a range of goods and services. Exhibit MCA6 provides examples of such transactions, including an order acknowledgement between the opponent and a customer in Italy, a copy of a sales contract between the opponent and a customer in France and an order acknowledgement between the opponent and a customer in Germany. Also enclosed are copies of various business cards of Senior Executives of the opponent who are based in the EU and have specific expertise in providing goods and services bearing the famous ‘NTT’ mark to the manufacturing industry in the EU.

• As previously mentioned, the opponent has also been very prominent in marketing its goods and services to the manufacturing sector within the EU. Exhibit MCA7 provides details of its own NTT Global Forum which was held in Munich, Germany in 2012. These details include extracts from the corporate invitation to the event and an extract of the registration website.

• The opponent has a particularly strong reputation in the automotive industry within the EU. Exhibit MCA8 provides details of the opponent’s relationship with the Honda Racing Team which includes a copy of a delivery slip for specific bespoke goods (NTT-F Rackmount Cooler), an invoice between the opponent and Honda Racing Development UK (for various listed goods), compliance notice relating to the purchase of ‘NTT’ branded goods and a copy of a purchase order which lists the precise goods to be purchased by Honda. The prominence of the opponent’s ‘NTT’ mark in this specific manufacturing industry provides evidence that the relevant EU consumer is likely to perceive there to be a link between the goods and services of the applicant and the goods and services of the opponent which will cause detriment to, and take unfair advantage of the earlier well-known ‘NTT’ mark of the opponent. This is particularly relevant, given that the applicant manufactures products for use in the motor industry and, as such, is highly likely to share some customers with the opponent.

• It is consequently obvious that, as a result of the evidence provided above, the opponent’s earlier mark NTT enjoys a substantial reputation within the EU manufacturing industry. Allowing the applicant’s ‘NTT GROUP logo’ mark to proceed to registration is highly likely to cause the relevant EU consumer (potentially consumers of both parties goods and/or services, as explained above) to conclude that the goods and services offered by the applicant under its ‘NTT GROUP logo’ mark are somehow linked to the goods and services of the opponent under its earlier and well-known mark ‘NTT’, when this is obviously not the case.

• The mere fact that such a link between the parties is possible on the part of relevant shared EU consumers, falls within the scope of protection that the opponent should be entitled to rely upon under Article 8(5) EUTMR.

Article 8(1) EUTMR

• The Opposition Division erred in its application of the global assessment test when analysing the distinctive and dominant elements of the respective marks and when applying the test for establishing the likelihood of confusion, specifically in relation to the complementary nature of the respective goods and services. The opponent submits that the aforementioned evidence overwhelmingly indicates that the parties operate in the same or very similar commercial sectors and, as a result, are likely to share the same customers who are likely to use the products and/or services offered by both parties.

• When this correct comparison is made, the respective goods and services are clearly complementary and a likelihood of confusion on the part of the public is likely to occur.

• The opponent therefore submits that as the respective marks are near identical when compared side by side, the complementary nature of the respective goods and services is enhanced due to the high level of similarity between the marks in question and the overlapping commercial sectors in which both of the respective parties operate in within the EU.

10. The applicant requests that the Board dismiss the appeal, uphold the contested decision and the opponent ordered to bear the costs. Its arguments may be summarised as follows:

Article 8(1)(b) EUTMR

• The trade mark ‘NTT’ enjoys protection for goods and services related to IT technology software and goods. The applicant’s goods and services relate to industrial hardware components and service related to such goods.

• The applicant’s main business is to manufacture physical components which mechanically interact in machines or other physical products. There is no similarity or relationship whatsoever between the products and services under the two marks at hand. None of the applicant’s products or services in any way includes any of the goods or services protected by the ‘NTT’ trade mark, nor do any of the products or services protected by the ‘NTT’ mark include any of the applicant’s products or services. The applicant and the opponent are active in separate and isolated markets and the applicant’s products and services are used on a stand-alone basis and do not need to be complemented by the opponent’s product or services and vice versa. Thus, since there is no interrelation between their respective uses, the services and goods under the respective marks do not complement each other.

• The claim by the opponent that the parties operate in the same or very similar commercial sectors and would therefore share the same customers is inaccurate. As an example thereof, the opponent refers to the automotive industry although the applicant does not have any operations within the automotive industry at all. In fact, the company holds policy not to sell products or services to the automotive industry. Likelihood of confusion on the part of the public is thus not likely to occur.

• Consequently, the opponent has failed in evidencing that the goods and/or services of the opponent and applicant may be considered similar and/or complimentary, with confusion among the consumer following as a result thereof.

Article 8(5) EUTMR

• In order for a trade mark to be considered to have a reputation it must prove to have a reputation in a substantial part of the EU. It follows from case-law and EUIPO practice that submitted evidence must specifically concern the relevant territory. From the documentation submitted by the opponent it cannot be concluded how the earlier mark is exposed in the EU market and towards which customer groups it is targeted. Further, it is not possible to extract relevant information from the documentation provided that shows the market share of the mark ‘NTT’ and the respective goods and services it covers in the EU, the intensity, geographical extent, duration of its use or the size of the investment made by the opponent to promote the trade mark ‘NTT’, which are all particularly relevant, but not exclusive, factors in assessing the reputation of a trade mark according to the case-law. Therefore, it is the applicant’s opinion that the opponent has not been able to show that the trade mark ‘NTT’ has a reputation in the EU. Even if the trade mark ‘NTT’ would be considered to have a reputation and to be similar to the trade mark ‘NTT GROUP logo’ the opponent still has not provided adequate evidence that the distinctiveness or the repute are likely to be detrimentally affected or harmed by the applicant’s use of the trade mark ‘NTT GROUP logo’. General allegations of detriment or unfair advantage are not sufficient for proving potential detriment or unfair advantage to an earlier trade mark. In the absence of such proof, the use of a later mark shall not be considered to take unfair advantage of, or be detrimental to, any distinctive character or the repute of an earlier mark. Thus, even if the trade mark ‘NTT’ could have been considered to have a reputation and to be similar to the trade mark ‘NTT GROUP logo’, it would still neither cause detriment to ‘NTT’ nor would the use constitute unfair advantage thereof.

Reasons

11. The appeal complies with Articles 58, 59 and 60 EUTMR and Rule 48 CTMIR. It is, therefore, admissible.

Article 8(1)(b) EUTMR

12. According to Article 8(1)(b) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

13. For the purposes of applying Article 8(1)(b) EUTMR, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (22/01/2009, T-316/07, easyHotel, EU:T:2009:14, § 42 and the case-law cited).

14. According to the Court of Justice’s case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29 and of 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).

15. The likelihood of confusion must be appreciated globally, in accordance with the relevant public’s perception of the signs and of the goods and services in question, taking into account all factors relevant to the circumstances of the case (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22 and of 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18), in particular the similarity of the marks and the similarity of the goods and services, which are interdependent criteria in the sense that a lesser degree of similarity between the goods may be offset by a greater degree of similarity between the marks, and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

16. The global appreciation of the likelihood of confusion must, as regards the visual, aural or conceptual similarities between the marks in question, be based on the overall impression created by them, bearing in mind, in particular, their distinctive and dominant components. The wording of Article 8(1)(b) EUTMR, ‘...there exists a likelihood of confusion on the part of the public...’, shows that the perception of marks in the mind of the average consumer of the category of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, since s/he only rarely has the chance to make a direct comparison between the different marks but must place his/her trust in the imperfect picture of them that s/he has kept in his/her mind (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23 and of 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25).

Relevant public/territory

17. The earlier mark is a European Union trade mark. Thus, in order to establish whether there is a likelihood of confusion between the marks in dispute, account must be taken of the point of view of the relevant public within the EU.

18. It follows from the unitary character of the European Union trade mark laid down in Article 1(2) EUTMR that an earlier European Union trade mark is protected in the same way in all Member States. Earlier European Union trade marks may, therefore, be relied on in opposition to any subsequent application to register a trade mark which infringes their protection, even if it does so only in the perception of the consumers of part of the European Union. It follows that the principle laid down in Article 7(2) EUTMR, according to which it suffices, in order for registration of a trade mark to be refused, that an absolute ground for refusal exists only in part of the European Union, also applies by analogy to a relative ground for refusal under Article 8(1)(b) EUTMR. Thus, ‘a part’ of the European Union can consist of only one Member State (14/12/2006, T-81/03, T‑82/03 and T-103/03, Venado, EU:T:2006:397, § 76 and 83, last sentence).

19. Thus, the opposition has to be upheld even if there is only a likelihood of confusion between the contested mark and the earlier European Union trade mark in one Member State. Whether or not there are other Member States in which there may be no likelihood of confusion is irrelevant for the purpose of the present proceedings.

20. The Board recalls that the relevant public for the assessment of the likelihood of confusion is composed of users likely to use both the goods and services covered by the earlier mark and those covered by the mark applied for (01/07/2008, T‑328/05, Quartz, EU:T:2008:238, § 23). The aforementioned overlap between the goods and services, as the case may be, cannot be precisely determined in advance, before the actual comparison of the goods and services, however, by taking into account broader circles of goods, the relevant public can still be defined with a fair degree of certainty.

21. The contested mechanical, technical goods and repair, installation services are mainly aimed at a public – be it professional or DIY/mechanic enthusiast ‒ with a relatively high level of attention, as well as a relatively high knowledge about the goods they purchase.

22. As to the goods and services covered by the earlier mark they are either aimed at a professional public with a high level of attention, or the general public with a normal level of attention e.g. with respect to recording media, portable telephones etc. (01/02/2012, T-353/09, mtronix, EU:T:2012:40, § 28)

Comparison of the goods and services

23. According to settled case-law, in assessing the similarity of the contested goods, account should be taken of all the relevant factors relating to those goods. Those factors include, in particular, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (11/07/2007, T‑443/05, Pirañam, EU:T:2007:219, § 37).

24. According to settled case-law, in assessing the similarity of the goods or services concerned, all the relevant features of the relationship between them should be taken into account, including, inter alia, their nature, their intended purpose, their method of use, and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned, or the fact that the goods are often sold in the same specialist sales outlets, which is likely to facilitate the perception by the relevant consumer of the close connections between them and strengthen the perception that the same undertaking is responsible for the production of those goods (18/06/2013, T‑522/11, Apli-Agipa, EU:T:2013:325, § 32 and the case-law cited) or that the goods are usually produced by the same manufacturer.

25. Goods are complementary if there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods lies with the same undertaking (17/12/2009, T‑490/07, R.U.N. EU:T:2009:522, § 57 and case-law cited).

26. The Board emphasises the following considerations made in the Court’s decision of 16/10/2014, T‑444/12, Linex, EU:T:2014:886, §29-30:

‘29 It is apparent from the case-law of the General Court that the criteria for applying a relative ground of refusal, which include the assessment of the similarity of the goods, are part of the matters of law submitted for examination by OHIM and that a matter of law may have to be ruled on by OHIM, even though it was not raised by the parties, if it is necessary to resolve that matter in order to ensure a correct application of Regulation No 207/2009 (judgment of 1 February 2005 in SPAG v OHIM — Dann and Backer (HOOLIGAN), T‑57/03, ECR, EU:T:2005:29, paragraph 21).

30 However and contrary to what the Board of Appeal suggests, that does not mean that OHIM may of its own motion raise facts on the basis of which such an assessment of similarity must be carried out. The system for bringing opposition proceedings on the basis of a relative ground of refusal established by Regulation No 207/2009 is based on the principle enshrined in Article 76(1), in fine, of that regulation, according to which it is for the parties to plead the grounds in support of the relief sought and to provide the facts and evidence relating thereto (judgment of 7 June 2005 in Lidl Stiftung v OHIM — REWE-Zentral (Salvita), T‑303/03, ECR, EU:T:2005:200, paragraph 76). The Board of Appeal may therefore not, merely on the ground that the comparison between the contested goods constitutes a matter of law, examine the underlying legal framework by relying on facts which have not been raised by the parties, although nothing prevents it from taking account of facts which are well known, that is, which are likely to be known by anyone or which may be learnt from generally accessible sources (judgment of 22 June 2004 in Ruiz-Picasso and Others v OHIM — DaimlerChrysler (PICARO), T‑185/02, ECR, EU:T:2004:189, paragraph 29), or which stem from the practical experience generally acquired from the marketing of general consumer goods, which facts are likely to be known by any person and are in particular known by consumers of those goods. In such a case, the Board of Appeal is, additionally, not even required to submit examples of that practical experience (see judgment of 3 February 2011 in Gühring v OHIM (Combination of the colours broom yellow and silver grey and combination of the colours yellow ochre and silver grey), T‑299/09 and T‑300/09, EU:T:2011:28, paragraph 36 and the case-law cited).’

27. In light of the foregoing, although the Board is not precluded from taking into consideration facts which are well known, that is, which are likely to be known by anyone or which may be learnt from generally accessible sources, this does not imply that the Board is allowed to do extensive research concerning the relevant factors for the comparison of goods and/or services. In fact, the Board is prohibited to do so. Therefore, it may be of decisive importance for the parties to provide specific and substantiated information, especially if the goods are not every day mass consumption goods, but specialised goods that are aimed at a professional public.

28. The Board notes that opponent’s arguments before the Opposition Division and before the Board as to why the goods and services are similar are rather short and are not corroborated by any concrete evidence. The subsequent contested decision is also rather concise and mainly states the non-applicability of some of the factors as mentioned above (see para. 6). In this respect, the Board notes that the Opposition Division considered, amongst others, the producers of the goods at issue to be different. The opponent disputes this but does not provide any evidence to corroborate its allegation or any of its other allegations concerning the comparison of the goods and services at issue: ‘the goods (and services) at issue are at least complementary’, the Board firstly points out that complementary goods are those where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods lies with the same undertaking (22/01/2009, T‑316/07, easyHotel, EU:T:2009:14, § 57 and the case-law cited).

29. Furthermore, if the opponent’s allegation has to be understood that its goods form part of the contested goods, which the Board does not consider to be the case and the opponent failed to substantiate in any way, this would imply that the purchaser of the opponent’s goods would be the applicant whereas the applicant’s goods would be sold to another public. Goods cannot be complementary if the relevant public of these goods is different (16/05/2013, T‑80/11, Ridge Wood, EU:T:2013:251, § 29 and the case-law cited). Moreover, it should be recalled that the evidence filed in respect of the use in commerce of the goods and services, such as the marketing brochures and testaments/interviews from customers, as to the opponent’s reputation in its market field (promotional material, participation in events etc.), to which the opponent appears to refer, does not have to be taken into consideration while comparing the competing goods and services, because what is relevant is the actual registration or the registration of the goods and services applied for

30. Thus, the fact that the opponent ‘has actively used its mark in the manufacturing sector and other industrial sectors and its services (and goods) are used by various large European companies that could also be customers of the applicant’ is irrelevant and there is no concrete evidence that the goods and services in question target the same consumer. Furthermore, as the opponent also states, the applicant’s website at http:/www.nttgroup.se/en/About-us has revealed that they offer various types of products in relation to mechanical transmission, which bear no connections with the opponent’s goods and services. The opponent’s allegation that ‘the website states that they currently have 60 employees which would suggest that the manufacture of these products is not labour intensive and the actual production is likely to be highly automated with a relatively small number of operators/employees controlling and managing the machinery’ is, firstly, only a mere presumption not backed up by any actual evidence to prove this statement and, secondly as mentioned above, the use in commerce of the goods and services is irrelevant in the comparison analysis of the goods and services in question.

31. In any event, without evidence showing the contrary, the Board considers that the contested goods are not indispensable or important for the use of the goods of the earlier mark or vice versa in such a way that consumers may think that the responsibility for the production of those goods in Classes 6 and 7 and the earlier goods in Class 9 lies with the same undertaking. The ‘same manufacturer’ argument might have been a relevant factor on its own (that is without being linked to the ‘complementary’ factor) in favour of the opponent’s arguments of similarity; that is if the opponent would have submitted evidence that it is common that manufactures produce both the contested goods and the goods of the earlier mark. However, no such evidence was submitted. The same applies to the contested services.

32. Furthermore, in order for the goods to be regarded as being in competition, there must be an element of interchangeability between them (04/02/2013, T‑504/11, Dignitude, EU:T:2013:57, § 42 and the case-law cited). However, in the present case, the goods covered by the mark applied for and those covered by the earlier marks are not interchangeable in so far as the goods at issue serve different purposes and cannot therefore be interchanged.

33. As the Opposition Division correctly notes, the mere fact that some devices may incorporate both mechanical and electronic components or parts does not make them similar, since the contested goods are mechanical products with specific purposes which will not normally be manufactured or provided by the same companies as the electronic goods and related services of the opponent. These goods are of a different nature and serve entirely different purposes than any of the opponent’s goods and services. The distribution channels, sales outlets and the producers do not coincide, the methods of use are different and the goods and services at hand are neither in competition with, nor complementary to, each other. Therefore, the Opposition Division’s finding according to which the contested goods in Classes 6 and 7 are dissimilar to the goods and services covered by the earlier mark in Classes 9 and 38 and 42 has to be endorsed.

34. As regards the contested services in Class 37 and as the Opposition Division correctly notes, the contested services in Class 37 are ‘repair and installation services and services of chains, electric motors and gear boxes’ which have clearly nothing in common with the opponent’s goods and services in Classes 9, 38 and 42.

35. First of all, it has to be borne in mind that earlier goods and the contested services have, by definition, a different nature. Besides, there is no similarity between on the one hand, the installation and repair services of chains, electric motors and gear boxes and, on the other hand, the various electronic, IT goods and other components in Class 9 protected by the earlier mark. It follows that, in accordance with the case-law, in the present case, these services cannot be found similar to the goods covered by the earlier mark (27/10/2005,T-336/03, Mobilix, EU:T:2005:379, § 66).

36. As for the services in Classes 38 and 42 of the earlier mark, the opponent has not given any arguments or evidence as to why the Opposition Division erred in its view that these services are dissimilar to those covered by the contested mark. The Board sees no reason to deviate from the Opposition Division’s position and therefore endorses the finding of dissimilarity.

Conclusion under Article 8(1)(b) EUTM

37. As correctly pointed out by the Opposition Division, the similarity (or identity) of the goods is a condition for a finding of likelihood of confusion in accordance with Article 8(1)(b) EUTMR. If there is no identity or similarity between the goods there cannot be a likelihood of confusion, even if the signs were identical and the earlier mark reputed (22/01/2009, T 316/07, easyHotel, EU:T:2009:14, § 42-43 and the case-law cited).

38. Therefore, independent of the outcome of the comparison of the signs and the assessment of the distinctive character of the earlier marks, it must be held that the Opposition Division was correct in finding that there was no likelihood of confusion between the marks at issue within the meaning of Article 8(1)(b) EUTMR and to the extent it considered the goods at issue dissimilar (26/09/2014, T‑490/12, Grazia, EU:T:2014:840, § 31 and the case-law cited).

39. The Board will now proceed to assess the applicability of Article 8(5) EUTMR

Article 8(5) EUTMR

40. Article 8(5) EUTMR determines:

‘Furthermore, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with or similar to the earlier trade mark and is to be registered for goods or services which are 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 European Union and, 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 trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.’

41. Thus, in order to determine whether Article 8(5) EUTMR is applicable the Board must assess, apart from whether the opponent possesses one or more earlier registered marks, which it does in the case at hand, the following:

1. Whether the mark(s) has/have a reputation in the relevant territory;

2. Whether the mark in respect of which registration is sought is identical to the earlier mark(s) or is similar to it;

3. Whether the use of the trade mark applied for without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark(s).

42. As correctly pointed out by the Opposition Division the above conditions are cumulative; failure to satisfy one of them is sufficient to render the provisions of Article 8(5) EUTMR inapplicable (25/05/2005, T‑67/04, Spa-Finders, EU:T:2005:179, § 30).

43. The Board will therefore assess the applicability of Article 8(5) EUTMR based on the earlier mark.

Reputation

44. For procedural economy, the Board will proceed on the presumption that earlier mark does have a reputation for all the goods and services on which the opposition is based as this will not alter the outcome of the decision. In addition, before the Board, the applicant states that even if the earlier mark were reputed (although it disputes this), the opposition based on Article 8(5) EUTMR would be unfounded because the opponent still has not provided adequate evidence that the distinctiveness or the repute are likely to be detrimentally affected or harmed by the applicant’s use of the trade mark ‘NTT GROUP logo’.

Comparison of the signs

45. As to the contested mark ‘NTT GROUP logo’ and the earlier mark ‘NTT’, the Board considers them similar. Neither party disputes the similarity between the marks at hand.

Unfair advantage

46. As regards specifically the existence of injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the mark applied for, the existence of such injury must be assessed by reference to average consumers of the goods or services for which the mark applied for is registered, who are reasonably well informed and reasonably observant and circumspect (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 36).

47. Such a conclusion may be established, in particular, on the basis of logical deductions made from an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case (29/03/2012, T-369/10, The Beatles, EU: T:2012:177, § 62 and 10/05/2007, T‑47/06, Nasdaq, EU: T:2007:131, § 54 and the case-law cited therein).

48. The notion of unfair advantage of repute covers situations where the application may profit from the renown of the opponent’s brand by unduly exploiting its prestige without due cause, with the result that the marketing of the contested goods is made easier by that association with the earlier mark with a reputation. The advantage arising from the use by a third party of a mark having similarities to a mark with a reputation is an advantage taken unfairly by that third party of the distinctive character or the repute of the mark where that party seeks by that use to ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the earlier mark in order to create and maintain the mark’s image (18/06/2009, C‑487/07, L’Oréal, EU:C:2009:378, § 50).

49. According to the opponent, the advantages arising from use by the applicant of the mark lies in the fact that the consumer could be attracted by the trade mark applied for and be influenced to purchase the products and services it covers. However, such an allegation is not sufficient to prove that the applicant would therefore derive an unfair advantage from the distinctiveness and reputation of the earlier marks. The opponent has not put forward any coherent example which would allow the Board to understand satisfactorily that there is a likelihood of such unfair advantage taking place.

50. Certainly, the opponent cannot merely contend that unfair advantage would be a necessary consequence flowing automatically from use of the sign applied for, in view of the reputation of the earlier sign and, in the present case, its high similarity to the contested mark. As a rule, general allegations of unfair advantage, as made by the opponent, are not sufficient in themselves.

51. In the opinion of the Board, use of the sign applied for should not imply a risk of unfair advantage being taken of the repute of the earlier mark as required under Article 8(5) EUTMR. The fact that both the reputed goods and services of the earlier mark and the contested goods have a technical dimension is not in itself enough to establish that the applicant would take unfair advantage of the earlier mark’s reputation. In this respect it should be noted that while some of the goods services of the earlier mark may be used by third parties in the commercialization of the contested goods, this circumstance remains too small to produce such a link in the mind of the relevant consumer or to determine an influenced purchasing behaviour in favour of the contested mark’s goods. The same applies to the contested repair and installation of said goods, which are even more far away removed from the earlier goods and services to establish a link in the mind of the relevant consumer.

52. It is true as argued by the opponent that as regards the degree of similarity between the marks at issue, the more similar they are, the more likely it is that the later mark will bring the earlier mark with a reputation to the mind of the relevant public. That is particularly the case where those marks are identical (by analogy, 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 44). However, the fact that the marks at issue are highly similar, is not sufficient for it to be concluded that there is a link between those marks. It is possible that the marks at issue are registered for goods or services in respect of which the relevant sections of the public do not overlap (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 45‑46).

53. It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark is applied, i.e. a specific business sector specialised in mechanical goods, and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 48). Moreover, even the opponent states that it ‘has also actively promoted and marketed its mark “NTT” on products which are used in the installation and servicing of computer equipment’ which are clearly not the same section of public that provide ‘repair and installation services of chains, electric motors and gear boxes’.

54. The opponent argues that use of the contested mark would enable the applicant, without taking the same financial risk, to benefit from the investment the opponent has spent on its sign and that its reputation would ease the introduction of its mark onto the market. Nevertheless, the opponent fails to clarify how the relevant public would be able to establish any kind of intellectual association between the goods in Classes 6, 7 and services in Class 37, incorporating the contested mark, and the claimed reputed goods and services of the earlier mark. On the other hand, while innovation, quality and affordable prices are positive characteristics of the image portrayed by a sign, the opponent has not been able to satisfactorily explain how such an image would, in the present case, be transferred to the contested sign in the mind of the consumer, who will perceive the contested sign in such a positive manner as to become persuaded in its acquisition of those goods.

55. Certainly, the further the respective goods and services are industrially or commercially placed from each other, the more unlikely it will be that the relevant public will make an association between the marks, or that even eventual detriment or unfair advantage will indeed take place. As pointed out in the foregoing paragraphs, there are huge differences between the goods and services considered, vis-à-vis their respective nature, purpose, method of use, service provider, manufacturer, marketing means, etc., which are to be further attached to the lack of an indispensable complementariness or a situation of reciprocal competition between them. These are all factors which, in the present circumstances, contribute decisively against the opponent’s arguments about the contested mark taking unfair advantage of the distinctive character or the repute of its earlier mark.

Detriment to the distinctive character of the mark

56. As regards the risk of dilution, the primary function of the mark as an indication of origin is compromised where the earlier mark’s ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to dispersion of the identity and hold upon the public mind of the earlier mark. That is notably the case where the earlier mark, which used to arouse immediate association with the goods or services for which it is registered, is no longer capable of doing so (14/11/2013, C‑383/12 P, Tête de loup, EU:C:2013:741, § 50 and 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 29).

57. The proprietor who invokes the protection granted by Article 8(5) EUTMR is required to adduce evidence that use of the later mark would be detrimental to the distinctive character of the earlier mark. To that end, the proprietor of the earlier mark is not required to demonstrate actual and present harm to his/her mark. When it is foreseeable that such injury will proceed from the use which the proprietor of the later mark may be led to make of its mark, the proprietor of the earlier mark cannot be required to wait for it actually to occur in order to be able to prohibit that use. The proprietor of the earlier mark must, however, prove that there is a serious risk that such an injury will occur in the future by adducing prima facie evidence of a future risk, which is not hypothetical, of detriment.

58. Insofar as the detriment alleged by the opponent is concerned, the facts, evidence and arguments submitted in no way suffice to substantiate how use of the contested mark in relation to the contested goods and services in Classes 6, 7 and 37 would be detrimental to the distinctive character of the earlier mark, reputed for electronic and IT goods in Class 9, telecommunication services in Class 38 and computer, computer programing, IT and related services, including repair and installation services of computer equipment, in Class 42 . The Board considers that it is not likely that such injury will result from the use that the proprietor of the later mark may be led to make of it as regards the specific types of components for mechanical transmission and repair and installation services in Class 37, which, as said above, are both industrially and commercially set apart, at a far distance, from opponent’s goods and services, making it improbable for the relevant public to construct a mental connection between the marks and for eventual detriment to occur.

59. The opponent basically states that the reputation of its mark would be detrimentally affected if the public ceased to associate them with goods and services originating from a single source, yet it fails to show that such an injury will follow from the use which the proprietor of the later mark may be led to make of its mark. The risk adduced by the opponent seems to be entirely hypothetical. As a result, when taking account of the normal practice in the relevant commercial sector of the contested goods and services as well as all the other circumstances of the case, as for example, the fact that the reputation of the earlier sign is concentrated on a business unrelated to the contested goods and services, the Board is convinced that the most probable and predictable use of the sign ‘NTT GROUP logo’ on the contested goods and services would not ‘per se’ be detrimental to the distinctive character of the opponent’s mark.

60. It is true that the proprietor of the earlier mark is not required to demonstrate actual and present harm to his/her mark for the purposes of Article 8(5) EUTMR, but it must adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or of detriment. Such a conclusion may be established, in particular, on the basis of logical deductions made from an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case. When it is foreseeable that such injury will ensue from the use which the proprietor of the later mark may be led to make of its mark, the proprietor of the earlier mark cannot be required to wait for it actually to occur in order to be able to prohibit that use. The proprietor of the earlier mark must, however, prove that there is a serious risk that such an injury will occur in the future (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53 and the case-law cited).

61. Considering all the above, the Board believes, therefore, that insufficient evidence has been provided by the opponent to prove that there is a serious risk that any injury will occur in the future (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 38).

Conclusion under Article 8(5) EUTMR

62. In light of the foregoing, the use of the trade mark applied for would not take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. Thus, the Opposition Division did not err in rejecting the opposition also insofar as it was based on Article 8(5) EUTMR.

63. Taking all of the above into consideration, the appeal is dismissed and the contested decision upheld in its entirety.

Costs

64. Pursuant to Article 85(1) EUTMR, the opponent, as the losing party, must bear the costs of the appeal proceedings. Pursuant to Article 85(6) EUTMR and Rule 94(3) last sentence CTMIR, the opponent is therefore ordered to reimburse the applicant’s costs of professional representation for the appeal proceedings, at the level laid down in Rule 94(7)(d) CTMIR of EUR 550. As to the opposition proceedings, the Opposition Division ordered the opponent to bear the applicant’s representation costs in the amount of EUR 300.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the opponent to bear the total amount of EUR 850 in respect of the representation costs of the applicant in the appeal and opposition proceedings.

Signed T. de las Heras

Signed C. Negro

Signed H. Salmi

Registrar: Signed H.Dijkema