OPPOSITION No B 2 472 879

Apple Inc., 1 Infinite Loop, Cupertino California 95014-2084, United States (opponent), represented by Locke Lord LLP, 201 Bishopsgate, London EC2M 3AB, United Kingdom (professional representative)

a g a i n s t

ShenZhen Ecapple Technology Co. Ltd, Room 203, Building 15, Longtang Village,

Longtang Community, Minzhi Street, Baoan District, Shenzhen, People's Republic of China (PRC) (applicant), represented by GLP S.R.L., Viale Europa Unita, 171, 33100 Udine (UD), Italy (professional representative).

On 27/01/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 472 879 is upheld for all the contested goods.

2. Community trade mark application No 13 274 221 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of Community trade mark application No 13 274 221. The opposition is based on, inter alia, Community trade mark registration No 9 783 978. The opponent invoked Articles 8(1)(b), 8(2)(c), 8(5) and 8(4) CTMR.

REPUTATION – ARTICLE 8(5) CTMR

According to Article 8(5) CTMR, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2) CTMR, the contested trade mark 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 Community trade mark, the trade mark has a reputation in the Community 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 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) CTMR 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 above-mentioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) CTMR (judgment of 16/12/2010, joined cases T‑345/08 and T‑357/08, ‘BOTOCYL’, paragraph 41). However, the fulfilment of all these 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. The signs

APPLE
Earlier trade mark	Contested sign

The relevant territory is the European Union.

Visually, the signs are similar to the extent that they coincide in the letters ‘A-P-P-L-E’. However, they differ in the letters ‘E-C’ and in the stylisation of the contested sign.

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 letters ‛A-P-P-L-E’ present in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letters ‛E-C’ of the earlier sign which have no counterparts in the earlier mark.

Conceptually, the English-speaking public will perceive ‘APPLE’ as the fruit of an apple tree, having red, yellow, or green skin and crisp whitish flesh varieties. The letters ‘EC’ placed at the beginning of the contested sign will be perceived by a significant part of the public in the relevant territory as the abbreviation of ‘European Community’ (http://dictionary.cambridge.org/dictionary/english/the-ec).

Therefore, for a part of the relevant public the marks are conceptually similar to the extent they both refer to the same concept of ‘APPLE’.

For the part of the relevant public that will only perceive the letters ‘EC’ as the abbreviation of ‘European Community’ the marks are not conceptually similar.

For the remaining part of the public, with no understanding or ‘APPLE’ or ‘EC’, a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

2. Reputation of the earlier trade mark

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

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 19/09/2014. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission and/or reproduction of sound or images or other data; magnetic data carriers; recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment; fire-extinguishing apparatus; apparatus, instruments and materials for transmitting and/or receiving and/or recording sound and/or images; downloadable audio and video recordings featuring music, comedy, drama, action, adventure and/or animation; computers, tablet computers, computer terminals, computer peripheral devices; computer hardware; computer networks; facsimile machines, answering machines, telephone-based information retrieval software and hardware; adapters, adapter cards, connectors and drivers; blank computer storage media; fonts, typefaces, type designs and symbols in the form of recorded data; chips, discs and tapes bearing or for recording computer programs and software; random access memory, read only memory; solid state memory apparatus; electronic communication equipment and instruments; telecommunications apparatus and instruments; telecommunications equipment, apparatus and instruments; computer and electronic games; computer software and computer hardware apparatus with multimedia and interactive functions; computer gaming machines; microprocessors, memory boards, monitors, displays, keyboards, cables, modems, printers, videophones, disk drives; central processing units; circuit boards; integrated circuits; magnetic, optical, and electronic data storage materials and devices; computer memory devices; blank computer storage media; solid-state data storage devices; user manuals in electronically readable, machine readable or computer readable form for use with, and sold as a unit with, all the aforementioned goods; apparatus for data storage; hard drives; miniature hard disk drive storage units; pre-recorded vinyl records, audio tapes, audio-video tapes, audio video cassettes, audio video discs; audio tapes for sale with booklets; sound, video and data recordings; CD-ROMs; digital versatile discs; mouse pads; batteries; rechargeable batteries; chargers; chargers for electric batteries; headphones; stereo headphones; in-ear headphones; stereo speakers; audio speakers; audio speakers for home; monitor speakers; speakers for computers; personal stereo speaker apparatus; radio receivers, amplifiers, sound recording and reproducing apparatus, electric phonographs, record players, high fidelity stereo apparatus, tape recorders and reproducing apparatus, loudspeakers, multiple speaker units, microphones; digital audio and video players with multimedia and interactive functions; accessories, parts, fittings, and testing apparatus for all the aforementioned goods; digital audio and video devices; audio cassette recorders and players, video cassette recorders and players, compact disc players, digital versatile disc recorders and players, digital audio tape recorders and players; radios; audio, video, and digital mixers; radio transmitters; car audio apparatus; global positing systems; navigation apparatus for vehicles (on board computers); cameras; video cameras; bags and cases adapted or shaped to contain cameras and/or video cameras; telephones; cordless telephones; mobile telephones; parts and accessories for mobile telephones; mobile telephone covers; mobile telephone cases; mobile telephone cases made of leather or imitations of leather; mobile telephone covers made of cloth or textile materials; portable digital electronic devices for data processing, information processing, storing and displaying data, transmitting and receiving data, transmission of data between computers, and software related thereto; handheld digital electronic devices for data processing, information processing, storing and displaying data, transmitting and receiving data, transmission of data between computers, and software related thereto; digital music and/or video players; MP3 and other digital format audio players; hand held computers, personal digital assistants, electronic organizers, electronic notepads; handheld and mobile digital electronic devices for the sending and receiving of telephone calls, faxes, electronic mail, video, instant messaging, music, audiovisual and other multimedia works, and other digital data; global positioning system (GPS) devices, telephones; handheld and mobile digital electronic devices for the sending and receiving telephone calls, faxes, electronic mail, and other digital media; bags and cases adapted or shaped to contain digital music and/or video players, hand held computers, personal digital assistants, electronic organizers and electronic notepads; holders, straps, armbands, lanyards and clips for portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio, image and video files; computer software; computer programs; pre-recorded computer programs for personal information management, database management software, character recognition software, telephony management software, electronic mail and messaging software, paging software, mobile telephone software; database synchronization software, computer programs for accessing, browsing and searching online databases, computer software for use in connection with online music subscription service, software that enables users to play and program music and entertainment-related audio, video, text and multi-media content, software featuring musical sound recordings, entertainment-related audio, video, text and multi-media content, computer software and firmware for operating system programs, data synchronization programs, and application development tool programs for personal and handheld computers; computer software for authoring, downloading, transmitting, receiving, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, and electronic publications; downloadable electronic publications in the nature of books, plays, pamphlets, brochures, newsletters, journals, magazines, and periodicals on a wide range of topics of general interest; computer hardware and software for providing integrated telephone communication with computerised global information networks; electronic handheld devices for the wireless receipt, storage and/or transmission of data and messages, and electronic devices that enable the user to keep track of or manage personal information; software for the redirection of messages, Internet e-mail, and/or other data to one or more electronic handheld devices from a data store on or associated with a personal computer or a server; computer software for the synchronization of data between a remote station or device and a fixed or remote station or device; sound effect apparatus and instruments (computer software); electronic tone generators (computer software); computer desktop utility software; screen saver software; software for detecting, eradicating and preventing computer viruses; software for data encryption; software for analysing and recovering data; software for computer system backup, data processing, data storage, file management and database management; software for telecommunication and communication via local or global communications networks, including the Internet, intranets, extranets, television, mobile communication, cellular and satellite networks; software for creating and delivering electronic greeting cards, messages and electronic mail; software for web design, creation, publishing and hosting; software for access to communications networks including the Internet; instructional material relating to the foregoing; computer disk holders; computer equipment for use with all of the aforesaid goods; electronic apparatus with multimedia functions for use with all of the aforesaid goods; electronic apparatus with interactive functions for use with all of the aforesaid goods; accessories, parts, fittings, and testing apparatus for all of the aforesaid goods; covers, bags and cases adapted or shaped to contain all of the aforesaid goods, made of leather, imitations of leather, cloth, or textile materials.

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; stickers and adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks; printed matter in the field of computers; printed matter in the field of tablet computers; printed matter in the field of multi-media products, interactive products and online services; printed publications; books; magazines; newsletters; periodicals; brochures; booklets; pamphlets; manuals; journals; leaflets; greeting cards; advertising and promotional material; catalogues; catalogues relating to computer software; computer brochures; computer handbooks; computer hardware publications; computer hardware reference manuals; computer hardware users guide; computer instruction manuals; computer manuals; publications relating to technology, digital technology and gadgets; catalogues relating to musical apparatus and instruments; catalogues relating to telecommunications apparatus, mobile phones, handheld and mobile digital electronic devices for the sending and receiving of telephone calls, faxes, electronic mail, video, instant messaging, music, audiovisual and other multimedia works, and other digital data; music books; music instruction manuals; music magazines; desk accessories, telephone and address books, agendas, diaries, calendars, posters, mounted and unmounted photographs, printed patterns for T-shirts and sweatshirts, display materials, decals and bumper stickers; booklets for sale with audio tapes; parts and fittings for the aforesaid goods.

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees; toys; playing cards; electronic hand-held game units; musical toys, games and playthings; toy audio apparatus; toy musical boxes; toy musical instruments; toy record players for playing tunes and cassettes; musical games; battery operated toys; electronic toys; electric computer games, other than those adapted for use with television receivers; electrical and electronic amusement apparatus (automatic, coin/counter freed); electronic games being automatic, coin-freed or counter-freed (other than those adapted for use with television receivers); hand-held electronic games and apparatus (other than those adapted for use with television receiver only); video games other than those adapted for use with television receivers only; automatic and coin-operated amusement machines; computer game apparatus other than coin operated or those adapted for use with television receivers; video output toys and games; electronically operated toys; interactive computer toys and games; musical toys and games; stand alone video game machines incorporating a means of display; toy handheld electronic devices; toy computers (not working); toy mobile telephones (not working); parts and fittings for all the aforesaid goods.

Class 35: Advertising; business management; business administration; office functions; providing office functions; business consulting services; advertising agency services; advertising and marketing services; promotion services; advertising and marketing consultation; sales promotion services; promoting the goods and services of others; conducting market research; market surveys; analysis of advertising response and market research; creation, preparation, production, and dissemination of advertisements and advertising material for others; media planning services; administration of consumer loyalty programs; arranging and conducting incentive rewards programs to promote the sale of goods and services; arranging and conducting of commercial, trade and business conferences, shows, and exhibitions; creating indexes of online information, sites and other resources available on global computer networks for others; providing business and commercial information over computer networks and global communication networks; business services, namely, providing computer databases regarding the purchase and sale of a wide variety of products and services of others; business services, namely, dissemination of advertising for others via computer networks and global communication networks; compilations of directories for publishing on the Internet and other electronic, computer and communications networks; computerised database and file management; data processing services; retail store featuring computer, electronic and entertainment products; retail store and online store services featuring computer, electronic and entertainment products provided via the Internet and other computer, electronic and communications networks; retail store and online store services in the field of computers, tablet computers, computer hardware, computer software, computer peripherals, consumer electronics, telecommunications and multimedia goods and accessories, mobile phone, handheld mobile digital electronic devices, and other consumer electronics and accessories, peripherals, and carrying cases for such products, and demonstration of products relating thereto; retail store services in the field of computers, tablet computers, computer hardware, computer software, computer peripherals, consumer electronics, telecommunications and multimedia goods and accessories, mobile phone, handheld mobile digital electronic devices, and other consumer electronics and accessories, peripherals, and carrying cases for such products, and demonstration of products relating thereto, provided via the Internet and other computer, electronic and communications networks; retail store services in the field of entertainment featuring music, video, film, books, magazines, periodicals, newsletters, journals and other publications on a wide range of topics of general interest, television, games, sports, movies, television programs, sporting events, musical works, pre-recorded audio and audiovisual works and related merchandise, and music related electronic products; retail store and online store services in the field of entertainment featuring music, video, film, books, magazines, periodicals, newsletters, journals and other publications on a wide range of topics of general interest, television, games, sports, movies, television programs, sporting events, musical works, pre-recorded audio and audiovisual works and related merchandise, and music related electronic products, provided via the Internet and other computer, electronic and communications networks; retail store services featuring telecommunications apparatus, mobile phones, handheld and mobile digital electronic devices for the sending and receiving of telephone calls, faxes, electronic mail, video, instant messaging, music, audiovisual and other multimedia works, and other digital data, accessories, peripherals, and carrying cases for such devices; retail store services featuring computer, electronic and entertainment products, telecommunications apparatus, mobile phones, handheld mobile digital electronic devices, tablet computers, music related electronic products, and other consumer electronics, computer software, and accessories, peripherals, and carrying cases for such products, provided via the Internet and other computer, electronic and communications networks; product demonstrations provided in-store and via communications networks and other electronic and communications networks; the bringing together, for the benefit of others, of a variety of service providers, in the fields of on-line services, communications, information technology, and publishing services, for customers to conveniently view and choose those services; computerised data storage and retrieval services; computerised data storage and retrieval services for digital text, data, image, audio, video and multimedia content; and video works; data storage of electronic music; online music and video subscription services; subscription services, namely, providing subscriptions to text, data, image, audio, video, and multimedia content, provided via the Internet and other electronic and communications networks; subscription services, namely, providing downloadable pre-recorded text, data, image, audio, video, and multimedia content in the fields of entertainment featuring music, video, film, books, periodicals, television, games, sports and computer software for a fee or pre-paid subscription, provided via the Internet and other computer, electronic and communications networks; internet services, namely, creating indexes of information, sites and other resources available on global computer networks and other electronic and communications networks for others; searching, browsing and retrieving information, sites, and other resources available on global computer networks and other electronic and communications networks for others; organizing content of information provided over a global computer network and other electronic and communications networks according to user preferences; online music subscription services; creating indexes of information, sites and other resources available on global computer networks for others; providing information, databases, directories, and podcasts in the fields of advertising; creating indexes of online information, sites and other resources available on global computer networks for others; information, advisory and consultancy services relating to all the aforesaid.

Class 38: Telecommunications; communication and telecommunication services; telecommunication access services; communications by computer; communications by tablet computer; communication between computers; electronic sending of data and documentation via the Internet or other databases; supply of data and news by electronic transmission; providing access to websites and electronic news services online allowing the download of information and data; providing access to web sites on the Internet; serving and transmitting audio, video, multimedia, and advertising content to computers, mobile telephones, media players, and other mobile digital devices; delivery of digital music by telecommunications; providing temporary internet access to use on-line non-downloadable software to enable users to program audio, video, text and other multimedia content, including music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related programs; providing wireless telecommunications via electronic communications networks; wireless digital messaging, paging services, and electronic mail services, including services that enable a user to send and/or receive messages through a wireless data network; one-way and two-way paging services; communication by computer, computer intercommunication; telex, telegram and telephone services; broadcasting or transmission of radio and television programmes; time sharing services for communication apparatus; provision of telecommunications access and links to computer databases and the Internet; electronic transmission of streamed and downloadable audio and video files via computer and other communications networks; webcasting services (transmission); delivery of messages by electronic transmission; provision of connectivity services and access to electronic communications networks, for transmission or reception of audio, video or multimedia content; provision of telecommunications connections to electronic communication networks, for transmission or reception of audio, video or multimedia content; providing access to digital music web sites on the Internet; providing access to MP3 web sites on the Internet; delivery of digital music by telecommunications; provision of telecommunications connections to the Internet or computer databases; providing user access to the Internet (service providers); electronic mail services; telecommunication of information (including web pages), computer programs and any other data; video broadcasting, broadcasting pre-recorded videos featuring music and entertainment, television programs, motion pictures, news, sports, games, cultural events, and entertainment-related programs of all kinds, via a global computer network, computer and other communications networks; streaming of video content via a global computer network; subscription audio broadcasting via a global computer network; audio broadcasting; audio broadcasting of spoken word, music, concerts, and radio programmes; streaming of audio content via a global computer network; electronic transmission of audio and video files via communications networks; communication services, namely, matching users for the transfer of music, video and audio recordings via communication networks; electronic bulletin board services; providing computer bulletin board in the fields of music, video, film, books, television, games and sports; providing on-line bulletin boards for the transmission of messages among computer users concerning entertainment, music, concerts, videos, radio, television, film, news, sports, games and cultural events; rental and hire and leasing of communication apparatus and electronic mail-boxes; electronic news services; electronic communications consultancy; facsimile, message collection and transmission services; transmission of data and of information by electronic means, computer, cable, radio, teleprinter, teleletter, electronic mail, telecopier, television, microwave, laser beam, communications satellite or electronic communication means; transmission of data by audio-visual apparatus controlled by data processing apparatus or computers; provision of access time to web-sites featuring multimedia materials; providing access to databases and directories via communications networks for obtaining data in the fields of music, video, film, books, television, games and sports; providing users with access time to electronic communications networks with means of identifying, locating, grouping, distributing, and managing data and links to third-party computer servers, computer processors and computer users; organizing and conducting video conferences; provision of access time to web-sites featuring multimedia materials; providing users with access time to electronic communications networks with means of identifying, locating, grouping, distributing, and managing data and links to third-party computer servers, computer processors and computer users; providing computer data bases in the nature of a bulletin board in the fields of music, video, film, books, television, games and sports; providing an online searchable database of text, data, image, audio, video and multimedia content in the fields of telecommunications, mobile phones; providing temporary internet access to use on-line non-downloadable software to enable users to program audio, video, text and other multimedia content, including music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related programs; information, advisory and consultancy services relating to all the aforesaid.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; educational and entertainment services; entertainment and educational services, namely, providing text, video, audio, and multimedia materials; entertainment services, namely, providing computer games; entertainment and educational services, namely, providing electronic books, magazines, newspapers, journals, periodicals, and other publications; entertainment and educational services, namely, providing information, databases, directories, and podcasts in the fields of entertainment, news, current events, history, sports, games, the media, cultural events and activities, hobbies, publications; entertainment and educational services, namely, live performances, sporting events, cultural events, and lectures; provision of electronic publications (not downloadable); providing on-line electronic publications; publication of electronic books and journals on-line; providing publications from a global computer network or the Internet which may be browsed; computer-based and computer-assisted educational, teaching, and training services; computer assisted education services; computer assisted teaching services; computer assisted training services; computer based educational services; tablet computer assisted teaching services; tablet computer assisted training services; tablet computer based educational services; education services, providing of training, instruction and entertainment relating to computers, tablet computers, computer software, multimedia products, interactive products and online services, telecommunications apparatus, mobile phones, handheld and mobile digital electronic devices for the sending and receiving of telephone calls, faxes, electronic mail, video, instant messaging, music, audiovisual and other multimedia works, and other digital data, and distributing course materials therewith; education and training services, namely, conducting classes, workshops, and seminars in the field of computers, tablet computers, computer software, online services, information technology, internet website design, music, photography and video products and consumer electronics; arranging professional workshop and training courses; computer education training services; training in the use and operation of computers, tablet computers, computer software and consumer electronics; education services relating to online exhibitions and displays and interactive exhibits in the fields of computers, computer software, computer peripherals, portable and/or electronic devices, online services, high technology, communications, information technology, information services, music, entertainment and publishing; production of radio, television and Internet broadcasts of exhibitions; editing of audio-tapes; editing of cine-films; editing of video-tapes; editing of written text; film editing (photographic); videotape editing; digital imaging services; providing digital music (not downloadable) from MP3 web sites on the Internet; providing digital music (not downloadable) from the Internet; arranging and conducting of commercial, trade and business conferences; organising and conducting exhibitions, workshops, seminars, training and conferences; publication of printed matter and of instructional and teaching materials; entertainment in relation to contests, competitions, quizzes and lotteries; gaming and gambling services; organisation and presentation of contests, competitions, games, quizzes and lotteries; electronic contests, competitions, games, quizzes and lotteries provided by means of the Internet or on-line from a computer database or network; electronic publishing services; providing downloadable pre-recorded music and video for a fee or pre-paid subscription via the Internet or pre-bundled with computing devices; electronic games services provided by means of the Internet; providing computer databases in the fields of music, video, film, books, television, games and sports; entertainment services in the nature of musical, video, audio-video, and textual materials, namely books, plays, pamphlets, brochures, newsletters, journals, and magazines, on the subjects of sporting and cultural activities and a wide range of topics of general interest offered in-person and distributed over computer networks; providing electronic publications for browsing and downloading over computer networks, namely books, pamphlets, brochures, newsletters, journals, and magazines, on the subjects of computer hardware and software applications, telecommunications apparatus, mobile phones, handheld and mobile digital electronic devices for the sending and receiving of telephone calls, faxes, electronic mail, video, instant messaging, music, audiovisual and other multimedia works, and other digital data, and a wide range of topics of general interest; providing databases and directories via communications networks for obtaining data in the fields of music, video, film, books, television, games and sports; providing on-line facilities, via a global computer network, to enable users to program the scheduling of audio, video, text and other multimedia content, including music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related programs as they will be aired; providing an online searchable database of text, data, image, audio, video, and multimedia content in the field of entertainment featuring music, video, film, books, periodicals, television, games, and sports; providing an online searchable database of text, data, image, audio, video and multimedia content in the fields of consumer electronics; information, advisory and consultancy services relating to all the aforesaid.

Class 42: Scientific and technological services in the fields of computer hardware, computer software, computer peripherals, portable and/or electronic devices, communications and information technology and research and design relating thereto; industrial analysis and research services in the fields of computer hardware, computer software, computer peripherals, portable and/or electronic devices, communications and information technology ; design and development of computer hardware and software; computer hardware and software consulting services; technical support services, namely, troubleshooting computer hardware, computer peripheral, computer software and consumer electronic devices; installation, updating, maintenance and repair of computer software; technical consulting in the field of computers, tablet computers and consumer electronics; computer, tablet computer and consumer electronic diagnostic services; consulting services in the field of selection, implementation and use of computer hardware, computer software and consumer electronic systems for others; computer data recovery; consulting services in the field of selection, implementation and use of computer hardware and computer software for the operation of consumer electronic systems for others in the nature of audio, audiovisual and home and portable entertainment systems and devices; technical consulting in the field of consumer electronics, namely, audio, audiovisual and home and portable entertainment systems and devices; consulting services in the field of selection, implementation and use of computer hardware, computer software and consumer electronic systems for others, namely audio, audiovisual and home and portable entertainment systems and devices; rental of computer hardware and software apparatus and equipment; multimedia and audio-visual software consulting services; computer programming; support and consultation services for developing computer systems, databases and applications; graphic design for the compilation of web pages on the Internet; information relating to computer hardware or software provided on-line from a global computer network or the Internet; creating and maintaining web-sites; development of multimedia websites; hosting the web-sites of others; providing search engines for obtaining data via communications networks; application service provider (ASP) services featuring computer software; application service provider (ASP) services featuring software for authoring, downloading, transmitting, receiving, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, and electronic publications; application service provider (ASP) services featuring software for use in connection with online music subscription service, software that enables users to play and program music and entertainment-related audio, video, text and multimedia content, and software featuring musical sound recordings, entertainment-related audio, video, text and multimedia content; providing search engines for obtaining data on a global computer network; operating search engines; computer consulting and support services for scanning information into computer discs; design of advertisements and advertising material for others; providing an online searchable database of text, data, image, audio, video and multimedia content in the fields of computer hardware, computer software, consumer electronics, telecommunications and multimedia goods; providing information, databases, directories, and podcasts in the fields of technology; information, advisory and consultancy services relating to all the aforesaid.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 17/08/2015 the opponent submitted, in particular, the following evidence:

• Witness statement of the Director of the Legal Department of the opponent detailing the history, and activity of Apple mark in the European as well as describing the attached exhibits and dated 13/08/2015. According to the declaration the APPLE mark is used for computers, portable digital music and video players, mobile telecommunication devices, tablet computing devices and watch.

• Copies of articles from Forbes.com and The Telegraph dated 2012 stating that Apple is one of the most valuable companies in history with a market capitalisation of over 620 billion United States dollars and a market value of over 500 billion United States dollars.

• Copies of articles from US Finance Post dated 12/2003 and Appleinsider.com dated 02/2013 stating that Apple.Inc is worth more than 500 billion United States dollars.

• Copy of articles from Time, Daily mail and Fortune dated 02/2015 stating that Apple became the first United States company to cross the 700 billion United States dollars valuation mark.

• Copy of an article from The Telegraph dated 01/2014 stating that Apple is the company that has changed the world of computing and entertainment and providing a timeline of Apple’s history, including details on major company events.

• Copies of articles and press releases from some international publications, such as PC World, Wired, Fortune, Forbes, Business Week, etc, dated between 2006 and 2011 highlighting Apple’s branding efforts that have resulted in extraordinary levels of brand recognition and loyalty, thus earning for Apple the title as the world’s most innovative company and one of the leading branding companies in the world. The articles also refer to some books such as Emotional Branding of Marc Gobe stating Apple’s brand is the key to the company’s success; the biggest single computer company in the world, with $11 billion in annual sales; Apple is a really powerful brand; apple’s brand is the key; Apple is about imagination, design and innovation, and No Logo of Naomi Klein, stating that companies like Apple are selling brands rather than products, which evoke people’s hopes, dreams and aspirations, Adbusters of Jean-Marie Dru stating Apple expresses liberty regained…Apple’s famous ‘1984’ Super Bowl ad, for example, was expressly political: it’s message was, give power to the masses. The power, of course, was computing power.

• A copy of an article from Interbrand’s website www.bandchannel.com dated 06/2008 stating after a two-year hiatus Apple has returned to win the 2004 Readers’ Choice Awards for the brand with the most global impact – a title held by Google since 2002… at Apple’s core is great innovation, beautiful design and an ability to bring warmth and passion.

• Copies of Interbrand’s rankings from 2009 to 2014. Apple is ranked in first position in 2013 and 2014 as the best global brand with an estimated brand value of 98.3 USD billion in 2013 and 118.8 USD billion in 2014.

• Copy of the results of surveys published by Forbes of the World’s Most Powerful Brands from 2012 to 2015. Apple appears as the world’s most powerful brand with a value of 145.3 USD billion in 2015.

• Copies of the Millward Brown Optimor (MBO), a leading market research and brand valuation and management company, rankings. Over the period 2006 – 2015 Apple was found to be one of the top 100 brands in MBO’s Brandz Top 100 Most Valuable Global Brands. In 2011, 2012, 2013 and 2015 Apple was ranked in first position with an estimated brand value between 153.2 USD billion in 2011 and 246.9 USD billion in 2015. In 2014 Apple was ranked in second position with an estimated brand value of 147.8 USD billion.

• Copies of Fortune Magazine’s ‘Most Admired Company’ rankings for the years 2006 to 2015. In 2008 and 2009 was named ‘America’s Most Admired Company’ and in 2013, 2014 and 2015 was ranked number one in the ‘World’s Most Admired Companies’ report. In the 2014 rank, Apple is described as ‘The iconic tech company known for the iPhone and other stylish and user-friendly products’.

• Copies of the 2009, 2012, 2013 and 2014 Cool Brands rankings where Apple is listed as the number one and stating ‘Sleek stylish design combined with powerful, groundbreaking technology make Apple’s range of products iconic must-haves around the world…continuing to lead the industry with its award-winning computers, Apple has spearheaded the digital media revolution. Apple reinvented the mobile phone with its iPhone and App Store, and remains at the cutting edge of technology, recently launching an iPad with retina display…’.

• Copy of the survey ‘European Passion Study’ of Panelteam, an online research agency, conducted among 10,000 Europeans and dated 02/2010. Apple was ranked first in the list of brands that Europeans felt most passionately about.

• Copies of printouts from the website www.rankingthebrands.com of the European Brand Institute where Apple appears ranked as the most valuable global brand in 2011, 2012, 2013 and 2014.

• Copies of a selection of Apple’s registrations for its APPLE mark in the European Union.

• Copy of a printout from the website www.eurobrand.cc ‘eurobrand GLOBAL TOP 100 Ranking 2013’ by Eurobrand, stating that Apple is the world’s most valuable brand corporation, followed by Coca Cola and Google: The most valuable global brand Apple with a brand value of EUR 110,034 bn is followed by the brand portfolio of the Coca Cola Company representing a value of EUR 67,224 bn and Google with a brand value of EUR 55,000 bn.

• Copies of articles from different webpages, such a scultofmac.com, idownloadblog.com, web.archive.org, www.macworld.co.uk, public.es, etc. dated from 2004 to 2015 referring to APPLE mark and APPLE’s range of products.

• Copy of the external use policy of Apple titled Guidelines for using Apple trade marks and copyrights governing use of the APPLE trade marks by third parties including licensees, resellers, developers and customers.

• Copies of decisions of the Office and other jurisdictions around the world recognising the famous nature of Apple marks.

• Copies of extracts from annual reports showing the numbers of Apple iPod devices (portable digital music player) units sold as well as net sales figures worldwide, including in the European Union, from 2002 to 2014. The figures shows a total of 397 million of unit sold and a total of net sales of 67.7 USD billion during the relevant period.

• Copies of extracts from annuals reports showing the numbers of iPhone devices sold worldwide, including in the European Union, as well as the corresponding net sales from 2007 to 2014. The figures show a total of 590.3 million of unit sold and a total of net sales of 363 billion USD.

• Copies of extracts from annuals reports showing the numbers of iPad devices (a mobile media and telecommunications and computing device) sold worldwide, including in the European Union, as well as the corresponding net sales from 2010 to 2014. The figures show a total of 237.2 million of unit sold and a total of net sales of 118.6 billion USD.

• Copies of printouts downloaded from the versions of Apple’s country-specific Apple Store websites as at various dates from 2009 to 2014. The APPLE mark is displayed in connection with music application services, watch, mobile phone, computer, digital music and/or video players and tablet.

• Copies of printouts from the website www.alexa.com of Alexa an independent company that provides commercial web traffic data and analytics. The printouts show the traffic rank of the Apple website and indicate that APPLE website is one of the most visited websites worldwide. In particular, Alexa ranked Apple website at number 17 in the list of the most visited websites in Belgium and at number 19 in the United Kingdom. Apple website’s has approximately 1 billion of visitors. The statistics reported include: the United Kingdom which accounts for 4.1%, France for 2.7%, Germany accounts for 2.7%, Spain for 2.2% and Italy for 1.6%.

• Copy of a selection of articles discussing various store openings throughout Europe.

• Copy of a document showing the European locations of the Apple Store retail locations. The document shows that there are over 450 Apple Stores retail locations worldwide with over 100 just in the European Union with 29 in the United Kingdom, 19 in France, 15 in Italy, 14 in Germany, 11 in Spain, 3 in Sweden and 3 in Netherlands.

• Copies of advertisements appeared in several European magazines and newspapers, as well as examples of outdoor advertising to promote APPLE mark and its branded products, including billboards, bus advertisements, and bus shelter advertisements and examples of television commercials depicting the APPLE mark for tablets, computers, and mobiles phones.

• Copies of the relevant pages from Annual Reports (along with corresponding title pages) showing the advertising and sales figures during the period between 1994 and 2014.

It is clear from the evidence filed that the opponent’s APPLE trade mark has a colossal reputation in the European market especially in the field of IT and technology, in particular for goods such as mobile telephones, digital music and/or video players, table computers and computers. The opponent has provided cogent and apparently incontrovertible evidence that the trade mark in question has been put to intensive use in the European Union.

According to the record, the company was founded in 1976 and the APPLE mark was first used in 1977. By the end of 1986, Apple was selling its goods and services under Apple mark in more than 80 countries worldwide.

For many years, Apple has enjoyed an extraordinary level of success in the European Union. The annual figures are extremely high in terms of both value and units sold. Currently, in the European Union there are over 100 shops bearing the APPLE brand name and selling a broad range of products with the APPLE mark. Apple opened its first European flagship Apple Store retail location in the United Kingdom in 2004. Following the success of the Apple Store locations in the United Kingdom, Apple opened additional retail store throughout Europe, including in France, Germany, Italy, The Netherlands, Spain and Sweden. The opponent’s revenues from sales under the APPLE trade mark for over more than five years preceding the trial are extremely high in terms of both value and units sold.

The opponent has made large financial investments on marketing, advertising and promoting their ‘APPLE’ mark for instance in the press, on television, radio, outdoor media, internet, etc.

The APPLE website is one of the most visited websites worldwide. In particular, Alexa ranked Apple website at number 17 in the list of the most visited websites in Belgium and at number 19 in the United Kingdom. Apple website’s has approximately 1 billion of visitors. The statistics reported include: the United Kingdom which accounts for 4.1%, France for 2.7%, Germany accounts for 2.7%, Spain for 2.2% and Italy for 1.6%.

The substantial amount of advertising also increases consumer exposure to the opponent’s mark. The opponent’s advertising and promotional expenditures in connection with its APPLE branded products are substantial. From 2001 to 2008, opponent spent over 27 USD billion in advertising and promoting its APPLE mark in Europe. From 2009 to 2014, the opponent spent over 173 USD billion on advertising and promotion. Since 1977, print advertisements promoting the APPLE brand have appeared in different magazines with both national and regional circulation and different trade publications. In addition to magazines devoted to IT such as PC Advisor, Chip, Computer Shopper, PC Format, PC Plus, PC Answers, PC professional, IX and Technology Review, Computer Blid, PC Welt, Computerwoche, Le Monde Informatique, PC Max, 01 Informatique, etc., the opponent advertises in men’s and woman’s magazines such as GQ, Vogue, Men’s Health, Amica, Elle Deco, Women’s Health, Marie Claire, Esquire, Stuff, Allure, In Style, etc., as well as general interest magazines such as Vanity Fair, Time, Business Week, Rolling Stone, Conde Nast Traveler, Premier, People, Fortune, News Week, National Geographic, Travel+Leisure, The Face, Harpers & Queen, Q, Empire, New Scientist, Focus, TV Spielfilm, TV Movie, Geo, Musik Express, Prinz, l’Express, Enjeux Los Echos, Psychologies, Capital, Courrier International, Le Nouvel Observateur, etc., and newspapers and itehr weekend supplements with a large, general circulation such as The Times, The Guardian, The Independent, Le Monde, Les Echos, Sunday Telegraph Magazine, Evening Standard Magazine, Liberation, L’Equipe, Koelner Stadtanseiger, etc.. Thus, the record supports a finding that the opponent’s print advertising campaign reaches both genders at various income levels.

In addition to print media, the opponent advertises its APPLE mark prominently in cable and network television as well as outdoor media. The APPLE mark has been shown on European networks, such as MTV, Paramount, Paris Premiere, Canal+, Vox, DSF, ARD, RTL. Kabel 1. Vox, N24, Channel 4, Channel five, UK Gold, etc.

Moreover, as further testament to APPLE’s widespread recognition, the opponent’s APPLE mark has been consistently ranked as one of the most recognized and famous brands in Europe. In 2011, 2012, 2013 and 2014, the European Brand Institute ranked APPLE as the most valuable global brand. The APPLE brand has appeared in the top 100 international brands as ranked by Interbrand and reported in BusinessWeek each year between 2009 and 2014. The APPLE mark is ranked in first position in 2013 and 2014. Over the period 2006 – 2015, Millward Brown ranked the APPLE brand in the top 100 most valuable brands worldwide based on brand value. In 2009, 2012, 2013 and 2014, Cool Brands reported APPLE as the number one.

The opponent also garnered unsolicited publicity in newspaper and magazine articles. The Opposition Division notes the following representative examples:

Apple is now worth over $700 billion (time.com).

Apple possesses a unique ability to combine design and computing expertise….it was a bold claim but now Apple’s products, can make serious claims to have revolutions the lives of billions (telegraph.co.uk).

In addition, APPLE branded products are frequently the subject of articles and product reviews and the APPLE brand name has been the subject of numerous books.

The consumer recognition surveys evidence introduced by the opponent is also particularly persuasive. The surveys demonstrate that the APPLE mark is extremely well known and enjoys an unusually high degree of unaided recognition. Forbes reported APPLE as the world’s most powerful brand from 2012 to 2015. The fact that one of these surveys was commissioned prior to the instant litigation and was used in the ordinary course of business increases its probative value.

The Opposition Division is therefore satisfied that the earlier trade mark has been subject to a long-standing and intensive use and that it was generally well-known consumers in the European Union before the contested mark was applied for on 19/09/2014, at least in relation to the following goods: computers, digital music and/or video players, table computers and mobile telephones.

3. The ‘link’ between the signs

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

Possible relevant factors for the examination of a ‘link’ include (judgment of 27/11/2008, C‑252/07, ‘Intel Corporation’, paragraph 42):

 the degree of similarity between the signs;

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

 the strength of the earlier mark’s reputation;

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

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

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

As seen above, the marks are similar. In particular, the earlier mark ‘APPLE’ is entirely included in the contested sign. The marks differ in the additional two letters ‘EC’ at the beginning of the contested sign and in the slightly stylisation of the contested sign. The element ‘EC’ will be perceived by a significant part of the relevant public as the abbreviation of ‘European Community’. Therefore, for a substantial part of the relevant public ‘EC’ is weak as referring to the fact that the goods in question have some relation with the European territory. Additionally, the element ‘APPLE’ is meaningless for at least a part of the relevant public and therefore has a normal inherent distinctiveness. Moreover, the slightly stylisation of the contested sign has merely an ornamental function. Furthermore, it should be emphasised that the public for the goods covered by the conflicting marks overlap to a certain extent as they targeted to the general public. Therefore, it is likely that the later mark will bring the earlier mark to the mind of the relevant public.

Therefore, taking into account all the relevant factors of the present case, the Opposition Division concludes that when encountering the contested mark the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) CTMR (judgment of 26/09/2012, T‑301/09, ‘CITIGATE’, paragraph 96).

4. Risk of injury

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

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

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

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

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

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

The opponent contends, inter alia, that the applicant’s applied-for mark will dilute the distinctiveness of opponent’s APPLE mark.

Before examining the opponent’s claim, it is appropriate to recall that the opposition is directed against the following goods:

Class 3: Tobacco essence; Perfumery; Essential oils; Aromatics [essential oils]; Incense; Air fragrancing preparations; Essential oil for calming; Musk [perfumery]; industrial aromatics for perfume.

Class 9: Portable media players; Chargers for electric batteries; Bluetooth earphone; Headphones; Agendas (Electronic-); E-book reader; Galvanic cells; Projection apparatus; teaching apparatus; digital photo frames.

Class 34: Electronic cigarette; Cigarillos; Tips of yellow amber for cigar and cigarette holders; Cigarette cases; Cigarettes (Pocket machines for rolling-); Filters (Cigarette-); Pipes (Tobacco-); Pouches (Tobacco-).

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

Class 9: Computers, digital music and/or video players, table computers and mobile telephones.

Detriment to the distinctive character (dilution)

Detriment to the distinctive character of the earlier mark (also referred to as ‘dilution’, ‘whittling away’ or ‘blurring’) is caused when that 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 of the earlier mark (judgment of 27/11/2008, C‑252/07, ‘Intel Corporation’, paragraph 29).

The opponent bases its claim on the following.

‘The goods claimed under the application are identical or similar to those covered by the prior mark and for which this mark enjoys a considerable reputation. As regards the strength of the reputation and the degree of distinctive character of the prior mark, the stronger the prior mark’s distinctive character and reputation, the easier it is to accept that detriment has been caused.

We therefore submit that use of the application mark would cause significant detriment to the distinctiveness of the prior mark. A perception by the public that the application mark is connected with or associated with the opponent, even as an allusion which falls short of a suggestion of commercial affiliation, would consequently damage to the capacity of the prior mark to immediately distinguish goods and services originating from the opponent.

Furthermore, the prior mark would become part of a multitude of similar marks containing analogous distinctive components, and covering identical or similar goods and services, requiring the consumer to make a more careful and detailed assessment in order to confidently establish the trade origin of the opponent’s goods and services of the opponent. Such an effect would dilute the distinctive capacity and brand image that has been created for the opponent’s APPLE mark at considerable expense and effort, as detailed above. In simple terms, the prior mark would not add the same degree of value to the opponent’s goods and services, or have the same capacity to identify the opponent’s goods and services, as they did before.’

According to the Court of Justice of the European Union, ‘… the existence of injury consisting of detriment to the distinctive character or the repute of the earlier mark must be assessed by reference to average consumers of the goods and services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect’ (judgment of 27/11/2008, C 252/07, ‘Intel Corporation’, paragraph 35).

If the distinctive character of an earlier trade mark is one of the circumstances generally relevant for the applicability of Article 8(5) CTMR, it is particularly relevant in cases where precisely the distinctive character of the earlier trade mark is allegedly being put at risk.

‘Erosion’ of the earlier trade mark’s distinctive character is more likely where the elements of the trade marks giving rise to similarity between signs enjoy a considerable degree of inherent distinctive character. As mentioned by the Court of Justice, ‘the more “unique” the earlier mark appears, the greater the likelihood that the use of a later identical or similar mark will be detrimental to its distinctive character’ (judgment of 27/11/2008, C‑252/07, ‘Intel Corporation’, paragraph 74).

By contrast, likelihood of dilution is less likely when such elements have only a limited degree of inherent distinctive character. ‘… [T]he risk of dilution appears, in principle, to be lower if the earlier mark consists of a term which, because of a meaning inherent in it, is very common and frequently used, irrespective of the earlier mark consisting of the term at issue. In such a case, re‑use of the term in question by the contested trade mark is less likely to result in a dilution of the earlier mark’ (judgment of 22/03/2007, T‑215/03, ‘VIPS’, paragraph 38).

Dilution diminishes the selling power that a distinctive mark with favourable associations has engendered for a product in the mind of the consuming public.

The use of a sign which resembles a famous (and inherently distinctive) mark on goods and services unrelated to those for which the earlier mark is registered and enjoys reputation, will almost certainly cause a weakening of the distinctiveness of the earlier mark.

The Court of Justice stated in Intel (paragraph 29):

‘As regards, in particular, detriment to the distinctive character of the earlier mark, also referred to as ‘dilution’, ‘whittling away’ or ‘blurring’, such detriment is caused when that 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 when the earlier mark, which used to arouse immediate association with the goods and services for which it is registered, is no longer capable of doing so.’

That passage is clearly inspired by the work of the American jurist Frank I. Schechter, whose article ‘The Rational Basis of Trademark Protection’ (Harvard Law Review, 1927, p. 813) was cited by Advocate General Jacobs in his opinion in Adidas and by Advocate General Sharpston in her opinion in Intel. Advocate General Jacobs, in a passage (paragraph 37) that was quoted in full by Advocate General Sharpston in Intel, put the matter in the following terms:

‘The concept of detriment to the distinctive character of a trade mark reflects what is generally referred to as dilution. That notion was first articulated by Schechter, who advocated protection against injury to a trade mark owner going beyond the injury caused by use of an identical or similar mark in relation to identical or similar goods or services causing confusion as to origin. Schechter described the type of injury with which he was concerned as the ‘gradual whittling away or dispersion of the identity and hold upon the public mind’ of certain marks. The courts in the United States, where owners of certain marks have been protected against dilution for some time, have added richly to the lexicon of dilution, describing it in terms of lessening, watering down, debilitating, weakening, undermining, blurring, eroding and insidious gnawing away at a trade mark. The essence of dilution in this classic sense is that the blurring of the distinctiveness of the mark means that it is no longer capable of arousing immediate association with the goods for which it is registered and used. Thus, to quote Schechter again, ‘for instance, if you allow Rolls Royce restaurants and Rolls Royce cafeterias, and Rolls Royce pants, and Rolls Royce candy, in 10 years you will not have the Rolls Royce mark any more’.’

Three factors in particular incline the Opposition Division to uphold the opposition fully in relation to Article 8(5) CTMR: (a) the earlier mark is the leading brand in the European market in the field of computers, digital music and video players, table computers and mobile telephones. The APPLE trade mark belongs to that exclusive club which may accurately be referred to as a household name. Such trademarks, supported as they are by huge advertising budgets, are rarely out of the public eye; (b) the earlier mark enjoys a reasonable level of inherent distinctiveness, since the term APPLE makes no descriptive reference to the goods concerned (at least for a part of the relevant public) and nor is it so banal as to defeat memory; and (c) the younger mark imports the term APPLE, as a distinctive element placed after the letters ‘EC’. Given the notoriety of the earlier mark, the term APPLE is instantly recognisable in the contested mark.

The ambit of Article 8(5) CTMR extends to circumstances where the marks are similar (or identical), and the goods and services concerned are not similar. Indeed, this legislative provision was originally aimed exclusively at such situations, and the wording of Article 8(5) CTMR still reflects that reality. Thus, in the present case, given the inclusion of the famous earlier mark in the contested mark, the Opposition Division has no difficulty in finding that consumers who are familiar with the earlier mark, which is to say, a great many consumers in the EU, would call to mind the earlier distinctive and reputed mark when confronted with the contested mark on almost any product or service.

If the APPLE trade mark is incorporated into a sign, which is used by the applicant in relation to the goods and services under consideration, it is likely that the distinctive character of the opponent’ trade mark will suffer detriment in the manner described by Advocates General Sharpston and Jacobs and by the Court in Intel. The contested mark will evoke an association in the minds of consumers with the famous APPLE trade mark. The capacity of the APPLE mark to arouse immediate association with the opponent company will be diminished. This will lead to a weakening of the identity of the earlier mark and its hold on the public mind.

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to be detrimental to the distinctive character of the earlier trade mark.

Since the opposition is successful under the head of dilution, there is no requirement or purpose served in examining the opposition in relation to, for example, unfair damage to the reputation of the earlier mark pursuant to Article 8(5) CTMR.

5. Conclusion

Considering all the above, the opposition is well founded under Article 8(5) CTMR. Therefore, the contested trade mark must be rejected for all the contested goods.

Given that the opposition is entirely successful under Article 8(5) CTMR it is not necessary to examine the remaining grounds and earlier rights on which the opposition was based.

COSTS

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

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

According to Rule 94(3), (6) and (7)(d)(i) CTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Pedro JURADO MONTEJANO

Francesca CANGERI SERRANO

Rhys MORGAN

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.