OPPOSITION No B 2 526 179

Deutsche Post AG, Charles-de-Gaulle-Str. 20, 53113 Bonn, Germany (opponent), represented by Jonas Rechtsanwaltsgesellschaft mbH, Hohenstaufenring 62, 50674 Köln, Germany (professional representative)

a g a i n s t

Pošta Slovenije d.o.o., Slomškov trg 10, 2000 Maribor, Slovenia (applicant), represented by Jure Marn, Ljubljanska ulica 9, 2000 Maribor, Slovenia (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 526 179 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 620 216, namely against some of the services in Classes 35 and 38. The opposition is based on German trade mark registration No 30 012 966. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based.

According to Article 26(5) of the German law on protection of marks and other signs, the relevant date for calculating the five-year grace period in the cases where an opposition has been lodged against the registration of a mark is the date when the opposition proceedings are closed and not the date of registration of the mark.

According to the registration certificate submitted, an opposition was lodged against the registration of the mark and the proceedings were concluded on 17/10/2012. Therefore, the grace period had not yet expired at the date of publication of the mark applied for.

It follows that, the request for proof of use in relation to German national trade mark No 30 012 966 is inadmissible.

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

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

1. The services

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

Class 35: Collecting, forwarding and delivery of direct and indirect mail advertising.

Class 39: Postal, freight, express, parcel and courier services; transport and delivery of items, letters, parcels, packets; collecting, forwarding and delivery of consignments with written communications and other messages, in particular letters, printed matter, trade samples, circulars, books, Braille literature, newspapers, periodicals, brochures.

The contested services are the following:

Class 35: Direct mail advertising; publication of publicity texts; word processing; rental of advertising space; rental of advertising time on communication media; publicity material rental; on-line advertising on a computer network; outdoor advertising; dissemination of advertising matter; publicity; advertising by mail order; publicity agencies; publicity; document reproduction; systemization of information into computer databases; public relations; transcription of communications [office functions]; market research; advertising; office functions.

Class 38: Electronic mail; facsimile transmission; information about telecommunication; communications by computer terminals; communications by fiber [fibre] optic networks; providing user access to global computer networks; providing telecommunications connections to a global computer network; message sending; transmission of telegrams; transmission of telegrams; computer aided transmission of messages and images; communications by telephone; ticker tape services; communications by telegrams; telex services; telecommunications.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested services in Class 35

The contested direct mail advertising includes as a broader category the opponent’s collecting, forwarding and delivery of direct mail advertising. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The same applies to the contested advertising, which refers to services providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or to reinforce the client’s position in the market and to acquire competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, who study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc. Advertising includes, as a broader category the opponent’s collecting, forwarding and delivery of direct and indirect mail advertising. It is impossible for the Opposition Division to filter these services from the abovementioned category. Since the Opposition Division cannot, ex officio, dissect the broader category of the applicant services, the services are considered to be identical.

The contested publicity (listed twice); and publicity agencies are by their nature advertising services. These, therefore include as a broader category the opponent’s services in Class 35. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the aforementioned opponent’s services.

The contested dissemination of advertising matter and the opponent´s collecting, forwarding and delivery of direct and indirect mail advertising could overlap, as they could all be directed or include dissemination of mail advertising. It follows that the services are identical.

The contested advertising by mail order includes as a broader category the opponent’s collecting, forwarding and delivery of direct and indirect mail advertising, as the opponent´s services are separate steps from the advertising by mail order services. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested publication of publicity texts; on-line advertising on a computer network; outdoor advertising, such as the opponent´s services are by their nature a variety of different advertising services. They could all be provided by the same provider and target the same consumer. Furthermore, they have the same purpose and they could be in competition. It follows that these are similar to a high degree.

The contested rental of advertising space; rental of advertising time on communication media; publicity material rental and the opponent´s collecting, forwarding and delivery of direct and indirect mail advertising can coincide in their general purpose, namely to ‘reinforce a client’s position in the market’. They can also originate from the same provider (as an advertising company can provide a variety of advertising services) and target the same relevant public. These are, therefore, similar to a low degree.

The contested word processing; document reproduction; systemization of information into computer databases; public relations; transcription of communications [office functions]; market research; office functions are considered dissimilar to any and all of the opponent’s services, as they have a completely different nature, purpose and method of use. Furthermore, they are neither complementary to, nor in competition with the opponent’s services and although they may coincide in the target public, this is not a strong argument for finding a level of similarity between them.

Contested services in Class 38

In general the services classified in Class 38 can be divided in several groups, the majority of which relate to: (i) providing the means to allow one person to talk to another; (ii) transmitting messages from one person to another, and (iii) placing a person in oral or visual communication with another (radio and television) and providing the modern communication means for this.

The Opposition Division finds that the services that belong to the second group demonstrate certain similarities with the services provided by the opponent in Class 39, which also aim at delivering (amongst other items) messages over a distance. Moreover, some of these services, such as communications by telegrams; transmission of telegrams are typically provided by postal services providers. Furthermore, they share distribution channels and end users, serve the same purpose and are therefore also in competition. There exists, therefore, similarity between the contested electronic mail; facsimile transmission; message sending; transmission of telegrams; transmission of telegrams; computer aided transmission of messages and images; ticker tape services; communications by telegrams; telex services and the opponent’s postal services; forwarding and delivery of consignments with written communications and other messages.

The remaining contested services in Class 38 do not have this relationship with any of the opponent’s services. Therefore, information about telecommunication; communications by computer terminals; communications by fiber [fibre] optic networks; providing user access to global computer networks; providing telecommunications connections to a global computer network; communications by telephone; telecommunications are considered dissimilar to the opponent’s services.

Conclusion in relation to the comparison of services

It can be concluded that there is only a level of similarity (or identity) between services that relate to postal services in a broader sense and advertising. In the framework of the examination under Article 8(1)(b) EUTMR; the rest of the applicant´s services, however, do not show such a relationship when taking into account the relevant criteria applicable to the comparison and have been found, therefore, to be dissimilar to the opponent’s services.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical and similar to various degrees are directed partly at the public at large and partly at business customers with specific professional knowledge or expertise. The degree of attention of the relevant public is likely to vary from average to higher than average depending on the purpose of use and the specific prices of the particular services.

3. The signs

POST	PosiTa
Earlier trade mark	Contested sign

The relevant territory is Germany.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

Both signs are word marks. The earlier one consists of the element ‘POST’ and the contested one of the element ´PosiTa´.

The public in the relevant territory will perceive the earlier sign as referring to, among other services, ‘the system of mail delivery’: a particular kind of service, most commonly involving the receipt, transportation and delivery of letters and parcels. Moreover, the term ‘POST’ will be understood, among other meanings, with the meaning of: ‘to put up (a notice) in a public place’, ‘to announce by means of or as if by means of a poster’. Regarding the perception of this meaning of the word ‘POST’ in the relevant territory, the term has gained popularity in recent years because of its extensive use in social networking media.

In the same line as the above considerations and despite the fact that the German market of postal services was one of the first to be liberalised, the term ‘POST’ in Germany when used on its own − might be associated by German consumers with the former national postal operator and its legal successor in connection with goods and services that have been or have become closely connected with (or available from), the national postal network and post offices. This conclusion is supported by the several surveys filed by the opponent, listed further below.

Bearing in mind that the relevant services are collecting, forwarding and delivery of direct and indirect mail advertising, postal services, forward and delivery of consignments, the element ‘POST’ is per se non-distinctive or, in any event, weak for all these services covered by the earlier mark, since it refers to the nature or the means of providing the relevant services (13/05/2015, T‑102/14, TPG POST, EU:T:2015:279, § 50, 68-69; BGH (German Federal Court of Justice), 23/10/2008, I ZB 48/07, Post II, § 35).

The element ´PosiTa´ of the contested sign has no meaning for the public in the relevant territory. The term ‘posita’ itself has a meaning in Latin, namely posita something placed, from pōnere, to put, place; however it is to be expected that the word ´PosiTa’ (due to the specifics of the typeface, namely upper case letter ‘T’ and the letter ‘i’ represented in a larger typeface) will be seen as a compound spelling of the meaningless words ‘Posi’ and ‘Ta’ rather than the Latin word ‘posita’. In any case, the relevant public (average German –speaking consumer) is not used to Latin words in the context of the relevant services and therefore, the element ´PosiTa’ would not be endowed with any particular meaning. It follows that the element ‘PosiTa’ has a normal degree of distinctiveness for the relevant services.

The opponent argues that the element ‘PosiTa’ of the contested sign will be understood as a reference to the concept of the element ‘POST’ of the earlier mark. However, the opponent did not submit any evidence in support of its claim for the eventual perception of this element by the relevant public. Therefore and following from what has been said above regarding the element ‘PosiTa’, the opponent’s claim must be set aside.

Visually, the signs coincide in the letters ‘p/o/s/t’, present as ‘POST’ (which is weak for the relevant services) in the earlier mark, and as ‘POS*T*’ in the contested sign. However, they differ in the fourth and sixth letters, namely ‘i’ and ‘a’ of the element ´PosiTa´ of the contested sign.

Bearing in mind that the coincidence lies in that the letters of the earlier mark are all contained in the contested sign, but with two interposed letters and thus not in the same position, the signs are visually similar to a low degree. The word ‘POST’ will not be filtered out as a unit from the contested sign.

Aurally, while the earlier mark (which is per se weak for the relevant services) will be pronounced as [post], the verbal element of the contested sign will be pronounced as [po-zi-tɑ] by the public in the relevant territory. Therefore, the signs coincide in the sounds [p], [o] and [t] and differ in the sound [s] of the earlier mark and [z], [i] and [a] of the contested sign. Furthermore, the earlier mark contains one syllable, while the contested sign contains three syllables. It follows that the rhythm and intonation of the signs are different.

It is, therefore, concluded that the signs are aurally similar to a very low degree.

Conceptually, the meanings conveyed by the earlier trade mark, as well as its perception by the relevant public, bearing in mind the relevant services, have already been explained above. It is also concluded that the only element of the contested sign has no meaning for the public on the relevant territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

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

According to the opponent, earlier trade mark No 30 012 966 enjoys a high degree of distinctiveness ’due to an extensive and longstanding use’ in Germany, in connection with all the services for which it is registered. Such claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (see judgment of 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18). Considering that the evidence of use is set out in its entirety in this section, the Opposition Division will also determine here whether or not the earlier mark has a reputation, as it is relevant to the opposition further below.

The evidence was presented in a clear and structured manner and consists of the documents listed below. For the sake of clarity and ease of reference, the Opposition Division will maintain the numbering of items as provided by the opponent.

Annex 1 An excerpt from the Duden dictionary (www.duden.de) showing the entry for the word ‘Post’ followed by the symbol ^®.

Annex 2 Excerpts from the website www.wikipedia.org, containing a reference to the sign , referred to as the ‘Deutsche Post brand’, and from the opponent’s website, www.dp-dhl.com, in which the company’s history is explained in detail. The opponent emphasised in its observations that the word ‘Post’ was exclusively connected with Deutsche Bundespost (the German state postal service), the opponent’s legal predecessor, for almost 50 years and that, even after the privatisation of the original German state postal service in 1995, the German public associated the word ‘Post’ with the opponent, as its legal successor.

Annex 3 Copies of reports entitled ‘brand€valuation’ for the years between 2005 and 2014, prepared by Semion Brand-Broker GmbH, showing the value of the brand ‘Dt. Post’ (about EUR 13 million on average for 2013 and 2014), which held sixth position in the ranking of the most valuable German trade marks during the period 2008-2014.

Annex 4 A multi-year review (2007-2014) of Deutsche Post DHL, providing turnover figures for the business sectors mail, express, logistics, global freight forwarding, etc., and an overview of the opponent’s business in 2013.

Annex 5 Two consumer surveys (an explanation of the methodology used for the surveys is included) conducted by independent survey institutes, namely IPSOS Deutschland GmbH (2000) and NFO Infratest (2002), about the level of public awareness of the trade mark ‘POST’. According to the results of the IPSOS Deutschland GmbH survey (2000) concerning the secondary meaning of ‘POST’, when the interviewees were shown the name ‘POST’ 94.9% of them related it to the relevant services, and 77.6% recognised a specific undertaking behind those services. Of the interviewees, 70.6% named ‘Deutsche Post (AG)’, ‘Post (AG)’, ‘Bundespost’, ‘Gelbe Post (AG)’, ‘Post-Express’ or something similar when asked for the name of the undertaking they associated with this word. According to the survey conducted by NFO Infratest in November and December 2002, 67.8% of the interviewees spontaneously associated the designation ‘POST’ with a certain enterprise in Germany.

Annex 6 A consumer survey conducted by TNS Infratest in 2005 (an explanation of the methodology used for the surveys is included) that gives information about the level of awareness of the word ‘POST’, showing that 83.9% of the German public associated the word ‘POST’ with the opponent and, therefore, reaffirming the results of the two surveys conducted in 2000 and 2002 submitted as Annex 5.

Annex 7 A market survey entitled ‘“Post”: Distinctive character of this designation in connection with the transportation of letters and parcels’ (an explanation of the methodology used for the survey is included), carried out by Pflüger Rechtsforschung GmbH in October and November 2015 on 2 000 interviewees. The survey found that 97.5% of the interviewees knew the designation ‘Post’ in the context of ‘transportation of letter and parcels’; 63.8% connected the name ‘Post’ to the opponent.

Annex 8 Decision of the German Federal Patent Court regarding Cancellation Proceedings 26 W (pat) 27/06, dated 28/10/2010. The decision rejects a request for cancellation based on an alleged lack of distinctiveness because surveys in 2000 and 2002 had demonstrated that 78% of those surveyed associated the word ‘POST’ with postal services provided by the opponent. The Court held that the trade mark ‘POST’ had acquired a secondary meaning in trade circles prior to the date of the decision rendered on its registration, as a result of its use for the services in respect of which it had been applied for. The Court considered that use in the form ‘Deutsche Post’ had to be taken into consideration when determining the use of ‘POST’.

Annex 9 A scholarly article by Dr Büscher, a judge at the IP Senate of the German Supreme Court, published in 2006, according to which the trade mark ‘POST’ fulfils not only the requirements for distinctiveness acquired through use, but also those for a well-known trade mark in Germany, as, for postal services, almost 85% of the general public associates ‘POST’ with a particular company. An extract from the article that the opponent considers relevant has been translated into English.

Annex 10 Printouts from the internet showing the slogans ‘Die Post im Internet. Der E-Postbrief’ (‘The Post on the Internet. The E-Postbrief’) and ‘Die Post im Internet. Der E-Postbrief kommt’ (‘The Post on the Internet. The E-Postbrief is coming’). Some of the pages have the sign in the top left corner, with the text in German and English ‘By E-MAIL POST you are on the internet on the safe side. For he is just as binding, confidential and reliable as a letter to Deutsche Post.’

Annex 11 A printout from the website www.slogans.de (dated 14/07/2010), with the heading ‘Deutsche Post starts the E-Postbrief’, with a partial translation into English, stating: ‘With one of the biggest media campaigns of the year Deutsche Post mobilises the citizens for the new E-Postbrief’. The following sign appears on the printout: .

Annex 12 Printouts from www.horizont.net, dated 14/07/2010.

Annex 13 An article from the website www.postandparcel.info (dated 05/11/2010), entitled ‘Deutsche Post reaches hybrid mail landmark’. Reference is made only to the ‘E-Postbrief’.

Annex 14 A press release from www.marktforschung.de (dated 14/11/2011), on German public awareness of ‘E-POSTBRIEF’.

Annex 15 A presentation on the opponent’s advertising campaigns for ‘E‑POST/E-POSTBRIEF’, during the period 2010-2013, depicting the signs and featuring, as explained by the opponent, ‘various celebrities well-known to the German public’ (untranslated).

Annex 16 ‘Brand Assessment BRIEF 2010’ from Market Research Service Center, referring to brand awareness of the sign of over 90%.

Annex 17 Two market analyses by the German Federal Network Agency (Bundesnetzagentur), dated September 2009 (market data for 1999‑2008) and April 2013 (market data for 2008-2011), providing analyses of licensees in the mail sector; a breakdown of turnover figures in the licensed mail sector by provider shows that in 2011 ‘Deutsche Post’ was responsible for 90% of turnover in the sector.

Annex 18 Excerpts from a study by WIK-Consult dated 28/01/2014, stating in the section entitled ‘Postal market trends’ that ‘Deutsche Post is still the uncontested market leader with a market share of nearly 90%’.

Annex 19 A list from the Cedelex database of 219 ‘POST’ trade marks held by the opponent.

Annex 20 Printouts from the websites www.deutschepost.de and www.epost.de of what appear to be pages offering or promoting mail services, depicting the signs ‘POSTIDENT’, ‘POSTKIT’, ‘POSTCARD’, ‘INFOPOST’, ‘POST‑24/7’ (word mark), ‘POSTFACH’, ‘E POST’, and , some with a copyright notice dating from 2011. The sign appears on most of the pages.

The evidence indicates in general that a high percentage of the relevant public in Germany is aware of the sign ‛POST’ and that a significant portion of the relevant consumers may still link it to the former national postal services operator or to its legal successor.

However, this does not mean that for the purposes of this assessment, the earlier mark has achieved enhanced distinctiveness or reputation, which would normally lead to a broader scope of protection of the earlier mark. The results shown in the surveys can be explained by the specifics of the market reality in the sector.

The word ‛POST’ refers first and foremost to postal services in general. In German, in particular, it is a reference to a particular kind of service, most commonly involving the receipt, transportation and delivery of letters and parcels. While this may have been a service carried out by a single state-owned entity in the past (and consequently the provision of these services was necessarily attributed to this entity), this is no longer the case. In general, these types of services may be rendered by numerous companies. In German, ‛POST’ is also the term used for the items actually delivered by whichever company may be providing postal services. Someone waiting for the ‛POST’ in Germany would, thus, be waiting not for a particular enterprise but for letters or parcels to be delivered by anyone who does so. Although a very high percentage of the relevant German public recognises the trade mark significance of the word ‛POST’, this does not, in itself, demonstrate that this term has the value of a unique origin indicator when it is incorporated into trade marks that differ in their overall appearance, pronunciation and concept from the sole word ‛POST’. In this respect, it should be noted that, although the article headings refer to ‛POST’, most of the articles contain additional references to the opponent, Deutsche Post AG.

It is evident from the documents submitted that the trade mark ‘POST’ in Germany was registered in 2003. Having its roots in the Italian ‘poste’, (from Latin posita something placed, from pōnere to put, place) the word ‘POST’ found its way into the German language with the meaning explained in section c) of this decision long before the registration of the opponent´s trade mark. The Opposition Division does not question the validity of the registration of the earlier mark. Indeed, a finding of an absolute lack of distinctive character would not be compatible with the coexistence of European Union trade marks and national trade marks or with Article 8(1)(b) EUTMR, read in conjunction with Article 8(2)(a)(ii) EUTMR (see judgment of 24/05/2012, C-196/11 P, F1-Live, EU:C:2012:314, § 42-45). The Opposition Division is not in a position to find that the earlier national mark is completely devoid of distinctive character, as it would amount to calling into question the validity of the national mark. This cannot be done within the framework of the opposition proceedings.

The fact remains, however, that the word ‛POST’, per se, is devoid of distinctive character in respect of the earlier postal and related services. The earlier trade mark ‘POST’ has been only registered following distinctiveness acquired through use. The German Federal Court of Justice considered the earlier mark only to have a minimal scope of protection due to the descriptive function of this term (23/10/2008, I ZB 48/07, Post II, § 35-36). The Opposition Division considers in the particular case in question that the distinctiveness of the earlier mark, ‛POST’, must be seen as low in the current examination.

5. Global assessment, other arguments and conclusion

The services have been found to be partly identical, partly similar to various degrees and partly dissimilar to the opponent’s services.

It is noted that the signs are only visually and aurally similar to a low degree and they have no conceptual link. While the earlier mark consists entirely of the weak element ‘POST’, which will be related right away to the meanings specified above, the verbal element of the contested sign would not be connected with any particular meaning by the public in the relevant territory.

The Opposition Division finds the visual and aural differences between the signs sufficient (bearing in mind the observations about the weak distinctive character of the earlier sign and the fact that while all the letters of the earlier mark are contained in the contested sign they do not present a recognizable unit) for the consumers to safely distinguish the marks.

Bearing in mind the above, there is no reason for the German consumer, who for the purposes of the assessment is deemed to be reasonably well-informed and reasonably observant and circumspect, to believe that the marks under comparison come from the same undertaking or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected as far as it is based on this earlier right in relation to which Article 8(1)(b) EUTMR has been invoked.

The examination proceeds under the other ground of opposition invoked by the opponent in relation to the same earlier right, namely Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

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

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

• The signs must be either identical or similar.

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

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

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

In the present case, the applicant claims to have due cause for using the contested mark. The applicant’s claim will need to be examined only if the three abovementioned conditions are met (22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 60). Therefore, the Opposition Division will only deal with this issue, if still necessary, at the end of the decision.

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

2. The ‘link’ between the signs

In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

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

 the strength of the earlier mark’s reputation;

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

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

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

In the present case, the signs have been found visually and aurally similar to a certain extent owing to the letters that they have in common. Contrary to the single element of the earlier mark, the element ‘PosiTa’ of the contested sign is of normal distinctiveness. The term ‘PosiTa’ of the contested sign contains two additional, interposed letters (vowels). Therefore, conceptually the word ‘post’ will not be filtered out from the contested sign as a unit.

Furthermore, the low degree of visual and aural similarity of the signs will not trigger a mental connection between them even in relation to identical services. There is nothing in the contested sign that would bring the earlier mark to mind, as there is no reason to assume that consumers would dissect the three-syllable term (namely ´PosiTa´ of the contested sign) in order to extract and perceive the single-syllable element ´POST´ of the earlier mark. The consumers tend to perceive a trade mark as a whole and there is no reason to believe that a mere set of coinciding letters of the element ´PosiTa´ and the element ´POST´ would result in the contested sign being related to the earlier one.

Therefore, taking into account and weighing up all the relevant factors of the case in question, the Opposition Division concludes that it is virtually excluded that the relevant public will make a mental connection between the signs in dispute, that is to say, to establish a ‘link’ between them.

For the sake of completeness of the examination it is to be noted that even if part of the public could possibly establish a link between the contested sign and the earlier mark and even under the assumption that the earlier mark has a reputation, there is no reason to believe that the use 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 as will be explained below.

3. Risk of injury

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

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

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

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

Although in opposition proceedings detriment or unfair advantage may be only potential, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must however ‘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, EU:T:2012:348, § 53).

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

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free‑riding on the coat‑tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/06/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

The opponent claims that if the contested sign is placed on the German market, the relevant consumer would assume that the applicant’s services possess similar attributes to those of the opponent and would transfer characteristics of the opponent’s services to the applicant’s services. It is concluded that as a result, the applicant would gain a commercial advantage over its competitors in the marketplace that would not derive from the applicant’s own marketing efforts.

There is no evidence of unfair advantage or any kind of exploitation of the ‘fame’ of the earlier mark. The low similarities between the distinctive verbal element of the contested sign and the element of the earlier mark, which refers to the relevant services and is commonly used for them, in no way means that the applicant is trying to take unfair advantage of the distinctive character or the repute of earlier mark, which solely consists of such a term. The line of argument developed by the opponent cannot be followed. On the basis of the above, the Opposition Division concludes that the use of the contested trade mark will not take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Detriment to the distinctive character (dilution)

The opponent argues, furthermore, that the use of the contested sign in the same market as the opponent’s mark ‘would unavoidably weaken the established position of the Opponent’s well-known trademark “POST”.’

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, EU:C:2008:655, § 29).

If the distinctive character of an earlier trade mark is one of the circumstances generally relevant for the applicability of Article 8(5) EUTMR, 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 (sometimes called ‘dilution by blurring’) 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, EU:C:2008:655, § 74).

By contrast, likelihood of dilution is less likely when such elements have only a limited degree of inherent distinctive character. ‘… The 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’ (judgment of 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 38).

The circumstances in the present case do not suggest that use of the contested trade mark will result in dilution of the earlier trade mark. The term ‘POST’ (although registered as a trade mark in Germany) is a generic term per se and is extensively used to designate the system of mail delivery. Thus its inherent distinctiveness is of such a nature that it simply cannot be diluted any further. Furthermore, this element is not reproduced in the contested sign, as there is no reason to assume that consumers would dissect the element ´PosiTa´ of the contested sign in order to extract and perceive the term ´POST´ of the earlier mark.

On the basis of the above, the Opposition Division concludes that there are no indications suggesting that the use of the contested trade mark would be detrimental to the distinctive character of the earlier trade mark.

For the sake of completeness, it is noted that the opponent indicates in the notice of opposition that use of the contested sig will be detrimental to the repute of the earlier mark, however no further arguments were provided to justify such a finding, neither could the submitted evidence lead to such a conclusion. Therefore, it is concluded that no detriment to the repute of the earlier mark has been proven.

As seen above, it has not been established that the use 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 as required by Article 8(5) EUTMR. The opposition must, therefore, be rejected as not well founded under Article 8(5) EUTMR.

CONCLUSION:

It follows from the above that the opposition is rejected on the grounds of Article 8(1)(b) and 8(5) EUTMR.

COSTS

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

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

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

The Opposition Division

Gueorgui IVANOV

Eamonn KELLY

Julia SCHRADER

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

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