OPPOSITION No B 2 568 189

DNA Oy, Läkkisepäntie 21, 00620 Helsinki, Finland (opponent), represented by Krogerus Attorneys Ltd, Unioninkatu 22, 00130 Helsinki, Finland (professional representative)

a g a i n s t

bio.logis Genetic Information Management GmbH, Altenhöfer Allee 3, 60438 Frankfurt am Main, Germany (applicant), represented by Areti Georgiadou, Eschersheimer Landstr. 47, 60322 Frankfurt am Main, Germany (professional representative).

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

DECISION:

1. Opposition No B 2 568 189 is partially upheld, namely for the following contested goods and services:

Class 16: Decoration and art materials and media; printed matter; disposable paper products; filtering materials of paper; gums [adhesives] for stationery or household purposes; works of art and figurines of paper and cardboard, and architects’ models; paper and cardboard; stationery and educational supplies; bags and articles for packaging, wrapping and storage of paper, cardboard or plastics.

Class 42: Design services; IT services; authentication and quality control.

2. European Union trade mark application No 14 106 702 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 106 702. The opposition is based on European Union trade mark registrations No 5 717 971 and No 10 326 809. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

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 goods and services

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

European Union trade mark registration No 5 717 971

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; remote controlled apparatus and instruments and programs used for mobile control; portable telecommunications apparatus; telecommunications networks; memory cards, SIM cards, smart cards; apparatus for recording, transmission or reproduction of sound or images; electronic entertainment apparatus; automatic vending machines and mechanisms for coin-operated apparatus; mobile terminals, PDA apparatus and associated programs; computer programs.

Class 16: Paper, cardboard and goods made from these materials, printed matter; photographs; stationery; artists’ materials; office requisites; instructional and teaching material (except apparatus); packaging materials made of plastic.

Class 18: Leather and imitations of leather and goods of these materials; bags, rucksacks, travelling bags; umbrellas, parasols, and walking sticks.

Class 28: Games and playthings.

Class 35: Advertising; business management; business administration; office functions.

Class 37: Building construction; repair; installation services.

Class 38: Telecommunications.

Class 41: Education; providing of training; entertainment; online entertainment services for Internet, mobile and television environments; sporting and cultural activities.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

European Union trade mark registration No 10 326 809

Class 9: Computer programs and software; computers, tablet computers; GPS devices; data transfer devices, modems; phones, mobile phones; smart cards; SIM-cards.

Class 16: Printed matter in the field of communication products and services and entertainment and recreational services.

Class 35: Retail services in the field of communications products.

Class 38: Telecommunication; television broadcasting.

Class 41: Entertainment and recreational services and sporting and cultural services provided through communication networks and devices; educational services provided through communication networks and devices in the field of communication devices and services.

Class 42: Scientific and technological services in the field of information and communications technology; technical support.

The contested goods and services are the following:

Class 16: Money holders; decoration and art materials and media; printed matter; disposable paper products; filtering materials of paper; gums [adhesives] for stationery or household purposes; works of art and figurines of paper and cardboard, and architects’ models; paper and cardboard; stationery and educational supplies; bags and articles for packaging, wrapping and storage of paper, cardboard or plastics.

Class 42: Design services; IT services; testing, authentication and quality control; science and technology services.

Class 44: Hygienic care for animals; human healthcare services; human hygiene and beauty care; agriculture, aquaculture, horticulture and forestry services; animal grooming services.

Earlier European Union trade mark No 5 717 971 is registered for the entire class headings of Classes 35, 37, 38, 41 and 42 of the Nice Classification. It was filed on 27/02/2007. Earlier European Union trade mark No 10 326 809 is registered for the entire class heading of Class 38 of the Nice Classification. It was filed on 10/10/2011. According to Communication No 2/12 of the President of the Office of 20/06/2012, as regards European Union trade marks filed before 21/06/2012, the Office considers that the intention of the applicant was to cover all the goods or services included in the alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the ninth edition.

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 goods in Class 16

The contested printed matter; paper and cardboard; stationery are also contained in the opponent’s list of goods and services. Therefore, they are identical.

The contested decoration and art materials and media overlap with the opponent’s paper, as the opponent’s goods include, inter alia, paper for painting and for decoration. Therefore, they are identical.

The contested disposable paper products; filtering materials of paper; works of art and figurines of paper and cardboard, and architects’ models; bags and articles for packaging, wrapping and storage of paper, cardboard are included in the broad categories of, or overlap with, the opponent’s goods made from these materials (paper, cardboard). Therefore, they are identical.

The contested gums [adhesives] for stationery are included in the broad category of the opponent’s stationery. Therefore, they are identical.

The contested educational supplies are included in the broad category of, or overlap with, the opponent’s teaching material (except apparatus). Therefore, they are identical.

The contested bags and articles for packaging, wrapping and storage of plastics are included in the broad category of the opponent’s packaging materials made of plastic. Therefore, they are identical.

The contested gums [adhesives] for household purposes and the opponent’s stationery are or include goods with the same purpose and nature, since the opponent’s stationery also includes adhesives for stationery. These goods may coincide in their producers and relevant public. Therefore, they are similar to a high degree.

The contested money holders have nothing relevant in common with the opponent’s goods and services in Classes 9, 16, 18, 28, 35, 37, 38, 41 and 42 expressly mentioned in the list of goods and services, or those included in the alphabetical lists of the classes for which the earlier marks cover the class headings. The goods and services under comparison do not fulfil similar functions from the consumer’s standpoint and they satisfy different needs. Their natures are different and they are not complementary or in competition. The relevant consumer will not regard the opponent’s goods and services and the goods of the contested sign as originating from the same undertaking, as they do not usually stem from the same commercial origin. The goods at issue are, therefore, dissimilar.

Contested services in Class 42

The contested design services; IT services include, as broader categories, or overlap with the opponent’s design and development of computer hardware and software. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested science and technology services include, as broader categories, the opponent’s scientific and technological services in the field of information and communications technology. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested testing, authentication and quality control are worded broadly and, depending on their exact nature, they could be included in several of the general categories protected by the contested mark (e.g. testing includes material testing, as well as software testing). The contested testing is a process used to identify characteristics or problems. It includes, inter alia, software testing and website usability testing services. The contested authentication is the action of establishing something as genuine or valid. These services include, inter alia, authentication of information, messages and data. The contested quality control is a procedure or set of procedures intended to ensure that a manufactured product or performed service adheres to a defined set of quality criteria or meets the requirements of the client or customer. All these contested services include, inter alia, services that are, by nature, IT services, and they all may be part of the process by which new IT products are checked before being brought to market. Consequently, some testing, authentication and quality control services are inherently included in the opponent’s design and development of computer hardware and software. Therefore, the contested testing, authentication and quality control, when related to the IT field, overlap with the opponent’s design and development of computer hardware and software. Consequently, they are identical.

Contested services in Class 44

The contested human healthcare services include the services provided by medical clinics and hospitals, and by chiropractics, physical therapists, dentists, etc. These services are similar to scientific services and research relating thereto, which may include scientific laboratory or medical research services. The services under comparison may be rendered by the same undertakings to the same relevant public. Moreover, they have the same distribution channels and are complementary. Therefore, they are similar.

The rest of the contested services, namely hygienic care for animals; human hygiene and beauty care; agriculture, aquaculture, horticulture and forestry services; animal grooming services, are not sufficiently related to the opponent’s goods and services in Classes 9, 16, 18, 28, 35, 37, 38, 41 and 42 expressly mentioned in the list of goods and services, or to those included in the alphabetical lists of the classes for which the earlier marks cover the class headings. The contested services are provided to improve human or animal appearance and are rendered in beauty centres, or are related to the fields of agriculture, aquaculture, horticulture and forestry. The goods and services under comparison have different natures and serve different needs. They do not have the same distribution channels and producers or providers as the opponent’s goods and services, and they are not complementary or in competition. Therefore, they are dissimilar.

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 goods and services found to be identical or similar (to different degrees) target both the public at large (e.g. stationery in Class 16 and human healthcare services in Class 44) and business consumers (e.g. IT services in Class 42 may be provided to the general public and to business consumers with specific business needs), as well as professionals with specific knowledge or expertise in, inter alia, the scientific field (e.g. science services in Class 42). The relevant public’s degree of attention will vary from average to higher than average, depending on the exact nature of these goods and services and their impact on human health or on the economic activities of the consumers in question.

3. The signs

European Union trade mark No 5 717 971 DNA European Union trade mark No 10 326 809	Digital DNA Panel
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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).

Earlier European Union trade mark No 5 717 971 is a figurative mark, consisting of the lower case letters ‘dna’ depicted in a white stylised typescript against a black oval background. Earlier European Union trade mark No 10 326 809 is a word mark, ‘DNA’. The contested sign is a word mark, ‘Digital DNA Panel’.

Neither of the marks has any element that could be clearly considered more dominant (visually eye-catching) than other elements.

The letters ‘DNA’, constituting earlier European Union trade mark No 10 326 809 and included in and identifiable as an element in earlier European Union trade mark No 5 717 971 and in the contested sign, will be understood by some parts of the relevant public (e.g. the English-speaking part of the public) as the abbreviation for ‘deoxyribonucleic acid’ – ‘a self-replicating material which is present in nearly all living organisms as the main constituent of chromosomes; it is the carrier of genetic information’.

Another part of the relevant public (i.e. the Romanian-speaking part of the public) will most probably associate these letters with the abbreviation for the National Anticorruption Directorate (Directia Nationala Anticoruptie), the Romanian agency tasked with preventing, investigating and prosecuting corruption-related offences, as this abbreviation is commonly used in various sources and media and is generally known by that part of the public.

Another part of the relevant public (e.g. the Latvian- and Lithuanian-speaking parts of the public) will not associate the letters ‘DNA’ with any meaning.

However, the relevant public for some of the goods and services at issue consists of professionals in the IT, scientific and medical fields. These professionals are, in general, more familiar with the use of technical and basic English words than the general public. Therefore, the letters ‘DNA’ will be understood as the abbreviation for ‘deoxyribonucleic acid’ by the professional public across the European Union. Consequently, bearing in mind that some of the relevant goods and services are related to science and medicine, the element ‘DNA’ is weak for some of these goods and services, namely for the opponent’s scientific services and research relating thereto in Class 42 and the contested testing; science and technology services in Class 42 and human healthcare services in Class 44, as they are or include services related to the fields of medicine and biology (e.g. medical research services or laboratory testing).

The letters ‘DNA’ have a normal degree of distinctiveness for the remaining goods and services, as they are not descriptive or of limited distinctiveness in relation to them.

The word ‘Digital’, included at the beginning of the contested sign, will be understood by the majority of the relevant public as, inter alia, ‘(of signals or data) expressed as series of the digits 0 and 1, typically represented by values of a physical quantity such as voltage or magnetic polarization; often contrasted with analogue’, ‘relating to, using, or storing data or information in the form of digital signals’, ‘involving or relating to the use of computer technology’. This perception of the English word ‘digital’ by the public in the European Union is due to the existence of this word in some of the relevant languages (e.g. English, German, Portuguese, Romanian and Spanish) or the existence of close equivalents of this word in other languages (e.g. ‘digitální’ in Czech, ‘digitaal’ in Dutch, ‘digitális’ in Hungarian, ‘digitale’ in Italian, ‘digitāls’ in Latvian). For other parts of the relevant public, for example the Lithuanian-speaking part of the public, the word ‘Digital’ of the contested sign will not be associated with any meaning. However, as seen above, professionals in, inter alia, the IT field are more familiar with the use of English words than the general public. Bearing in mind that some of the relevant services are or include IT-related services (e.g. design services and IT services in Class 42), this element is weak for these services. Therefore, the impact of this element in relation to these services is limited when assessing the similarity between the marks.

The word ‘Panel’, included at the end of the contested sign, will be understood by parts of the relevant public as, inter alia, ‘a flat or curved component, typically rectangular, that forms or is set into the surface of a door, wall, or ceiling’ or ‘a small group of people brought together to investigate or decide on a particular matter’, as this word exists as such in some of the relevant languages (e.g. Czech, Danish, English, Romanian and Spanish) and has very close equivalents in some languages (e.g. ‘paneel’ in Dutch, ‘panelis’ in Latvian). For another part of the relevant public (e.g. the Lithuanian-speaking part of the public), the word ‘Panel’ of the contested sign will not be associated with any meaning. This word has a normal degree of distinctiveness regardless of whether it will be perceived with a meaning or not, as it is not descriptive or of limited distinctiveness for the relevant goods and services.

For some of the relevant goods and services (e.g. stationery in Class 16), the contested sign has no elements that could be considered clearly more distinctive than other elements. For other relevant services (e.g. IT services in Class 42), the most distinctive elements of the contested sign are the elements ‘DNA’ and ‘Panel’, since the word ‘Digital’ is weak for these services. For a third group of the relevant services (i.e. testing; science and technology services in Class 42 and human healthcare services in Class 44), the most distinctive elements of the contested sign are the words ‘Digital’ and ‘Panel’, since the letters ‘DNA’ are weak for these services.

Visually, the signs coincide in the letters ‘DNA’, which constitute earlier European Union trade mark No 10 326 809 and are included in and identifiable as an independent element in earlier European Union trade mark No 5 717 971 and in the contested sign. They differ in the additional verbal elements, namely ‘Digital’ and ‘Panel’, in the contested sign. Earlier European Union trade mark No 5 717 971 also differs from the contested sign in its figurative element and stylisation. However, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

This principle is fully applicable to the present case, since the relevant public will clearly read and pronounce the element ‘DNA’ in the marks under comparison. The stylised depiction of the verbal element of earlier European Union trade mark No 5 717 971 does not alter the public’s perception of these letters. Consumers are accustomed to encountering trade marks in which one or more letters are depicted in a fanciful way, as in the present case. This stylisation of the mark will be perceived as an ordinary graphical means of bringing the letters in question to the public’s attention.

Although the beginning of a sign generally has more importance in the overall impression produced by that sign, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details.

As seen above, for some of the relevant goods and services the word ‘Digital’ of the contested sign has less impact on the public’s perception of the contested sign due to its limited distinctiveness, while for others all elements of the contested sign have equally important roles. Nevertheless, in both cases the letters ‘DNA’, although not determining the overall impression conveyed by the contested sign, retain an independent and distinctive role within that sign. Consequently, for those goods and services at issue the marks are visually similar to an average degree.

However, for another group of the relevant goods and services, namely the opponent’s scientific services and research relating thereto in Class 42 and the contested testing; science and technology services in Class 42 and human healthcare services in Class 44, the letters ‘DNA’, present in all of the marks under comparison, will be understood as having the meaning above by the relevant professional public and are of limited distinctiveness. Consequently, taking into account the fact that the signs under comparison have weak elements in common, with a limited impact on the overall impressions conveyed by the marks, the marks are visually similar only to a low degree for these services.

Aurally, irrespective of the different pronunciation rules in the different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘DNA’, constituting the whole of earlier European Union trade mark No 10 326 809 and present as an independent element in earlier European Union trade mark No 5 717 971 and in the contested sign. The pronunciation differs in the words ‘Digital’ and ‘Panel’, present in the contested sign, which have no counterparts in the earlier marks. For some of the relevant goods and services, the word ‘Digital’ has a limited impact on the public’s perception of the contested sign due to its limited distinctiveness, and for other goods and services all elements of the contested sign are equally distinctive. Taking into account all the elements of the marks that influence the consumer’s aural perception of them, the marks are aurally similar to an average degree for these goods and services.

For a third group of the relevant goods and services, namely the opponent’s scientific services and research relating thereto in Class 42 and the contested testing; science and technology services in Class 42 and human healthcare services in Class 44, the letters ‘DNA’, present in all the marks under comparison, will be understood as having the meaning above by the relevant professional public and are of limited distinctiveness. Consequently, taking into account the limited impact of the common elements of the marks, they are aurally similar to a low degree for these services.

Conceptually, as seen above, the relevant public for some of the goods and services at issue consists of professionals in the IT, scientific and medical fields, who will be familiar with the meanings of all elements of the marks under comparison and will perceive the letters that they have in common, ‘DNA’, as the abbreviation for ‘deoxyribonucleic acid’. However, in that case the contested sign as a whole does not form a logical and conceptual unit from the perspective of that part of the public and each of the verbal elements will be understood separately with the meanings mentioned above. Consequently, taking into account the weak distinctiveness of these coinciding letters and their limited impact on the overall impressions of the marks for some of the goods and services, it is considered that the marks are conceptually similar to a low degree for the opponent’s scientific services and research relating thereto in Class 42 and the contested testing; science and technology services in Class 42 and human healthcare services in Class 44.

The conceptual comparison continues below in relation to the remaining goods and services of the marks, for which the coinciding letters ‘DNA’ are distinctive per se.

The letters ‘DNA’, present in the marks under comparison, will be perceived by the English-speaking part of the public as the abbreviation for ‘deoxyribonucleic acid’. This element has a normal degree of distinctiveness for the remaining goods and services. For another part of the public, namely the Romanian-speaking part of the public at large, they will be understood as referring to the National Anticorruption Directorate of Romania. For those parts of the public, all the verbal elements of the marks are meaningful. For some of the relevant services, the word ‘Digital’ has a limited impact on the conceptual perception of the contested sign due to its limited distinctiveness, while for other goods and services all elements of the contested sign have equally important impacts. Consequently, given the above considerations about the meanings and distinctive character of the elements of the marks for the different parts of the relevant public, the marks are conceptually similar to an average degree, at least for the English- and Romanian-speaking parts of the public, to the extent that they have in common the element ‘DNA’ for the remaining goods and services targeting the public at large.

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 marks

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

According to the opponent, the earlier trade marks have a reputation and enjoy a high degree of distinctiveness as result of their long-standing and intensive use in Finland in connection with some of the services for which they are registered. This claim must be properly considered given that the distinctiveness of the earlier trade marks must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier marks, 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 (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The services for which the opponent has claimed enhanced distinctiveness and reputation are the following:

European Union trade mark registration No 5 717 971

Class 38: Telecommunications.

Class 41: Education; providing of training; entertainment; online entertainment services for Internet, mobile and television environments; sporting and cultural activities.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

European Union trade mark registration No 10 326 809

Class 38: Telecommunication; television broadcasting.

Class 41: Entertainment and recreational services and sporting and cultural services provided through communication networks and devices; educational services provided through communication networks and devices in the field of communication devices and services.

Class 42: Scientific and technological services in the field of information and communications technology; technical support.

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

On 11/01/2016, the opponent submitted evidence to support its claims. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

• Annex 1: results of a survey carried out by the independent company Taloustutkimus Oy and dated November 2013. The document is in Finnish and the opponent has translated the relevant parts into English. The subject matter of the survey was the reputation of the sign among 539 respondents between 15 and 79 years old and the geographical area was Finland. The conclusions of the survey show that a large percentage of interviewees recognised the sign and associated it with the opponent. To the question regarding which line of business the sign is used for, most interviewees answered ‘mobile telephone operator’, followed by ‘internet operator’ and ‘teleoperator’.

• Annex 2: results of a survey carried out by the independent company Research Insight Finland between 2010 and 2011. The document is in Finnish, but some of the pages with relevant information have been translated into English. The subject matter of the survey was the competitive position of the image of the company DNA among consumers between 15 and 64 years old and corporate customers, and the geographical area was Finland. The information shows that the opponent’s company shares the market of the mobile broadband sector with three other companies and has a considerable market share in the sector. It mentions that the study was conducted in relation to services of telecommunications operators. The results of the study show that the opponent’s sign comes second, together with another company’s, for spontaneous recognition among consumers and that more than half of the corporate interviewees recognise it. The brands being studied include the opponent’s sign , together with competitors’ signs, in particular , , and (e.g. page 27 and pages 42-44 of Annex 2).

• Annex 3: a printout from the website of the Finnish Patent and Registration Office, showing Finnish trade mark No 2 007 023 for the figurative mark , with the holder DNA Oy (the opponent), as one of the marks included in the list of trade marks with a reputation, maintained by the Finnish office since 15/12/2008. The services for which reputation has been established are telecommunication services in Class 38 (translated into English by the opponent in its observations).

• Annex 4: annual reports of the opponent’s company for 2013 and 2014, showing that it has realised a considerable amount of net sales during these years and has a large number of subscribers for its services. Figures show that the opponent maintains a large market share in the field of mobile communications, fixed-line voice, fixed-line broadband and cable TV services. It becomes clear that the opponent operates in the telecommunication services market (the opponent is referred to as an all-round telecom service provider, and some figures in the reports focus on different telecommunication services). The sign appears on the covers and the pages of the reports. The financial statements and reports presented by the opponent’s company on its financial position, financial performance and cash flows have been audited by an external auditor, PricewaterhouseCoopers Oy.

Having examined the material listed above, the Opposition Division concludes that the earlier trade marks have acquired a high degree of distinctiveness through use on the market in Finland for some of the services for which the opponent has claimed enhanced distinctiveness and reputation.

The documents demonstrate that the opponent’s company is one of the leading providers of telecommunication services in Finland and has a considerable market share in the sector and that the sign is generally known and recognisable for these services by the majority of the Finnish consumers.

The data on the opponent’s growth and performance and its investments contained in the annual reports, as well as the indications of the number of users of its telecommunication services and the market share held by the opponent, give some information about the steps undertaken by the opponent to build up a brand image and enhance trade mark awareness among the public. The opponent’s intensive and widespread activities are a strong indication that the marks have acquired a reputation among the consumers of the services in question. The effects of the opponent’s activities are reported in the surveys carried out by two independent companies, which clearly indicate a high degree of awareness of the opponent’s sign . The recognition of the sign as a trade mark with a reputation for telecommunication services by the Finnish Patent and Registration Office further supports and confirms this finding.

Consequently, the evidence submitted by the opponent suggests that the earlier trade marks have a consolidated position in the market and demonstrates that the opponent has made intensive use of its marks in Finland and that the marks are widely known by the public in the relevant territory for telecommunications.

Use of a trade mark in a form other than that in which it is registered, or in conjunction with other marks, may lead to an alteration of the distinctive character of the mark under assessment. Cases may arise where the distinctive character is sufficiently altered that the reputation gained by the altered form of the mark does not also exist for the version of the mark as it appears on the register. However, the mere fact that a mark is used in an altered form does not prevent the registered form of the mark from gaining a high degree of distinctiveness and a reputation. The legal assessment of reputation remains the same, namely it is an assessment of whether or not the registered form of the mark has become known by a significant part of the public for the goods or services covered by that trade mark.

In the present case, the evidence refers to the sign . The earlier figurative mark has been registered as . The addition of a pink background rectangle in the form used does not alter the distinctive character of the mark in such a way as to prevent it from gaining a high degree of distinctiveness and a reputation also in its registered form. As regards the earlier word mark ‘DNA’, the use of a stylised typescript for the word element ‘DNA’ against a black oval background constitutes an acceptable means of bringing the mark in question to the public’s attention and consequently does not affect the distinctiveness of the earlier word mark, ‘DNA’, either.

Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade marks enjoy a high degree of distinctiveness and a certain degree of recognition among the relevant public.

However, the evidence does not succeed in establishing that the trade marks have a high degree of distinctiveness for all the services on which the opposition is based and for which reputation has been claimed. The evidence relates to telecommunications in Class 38, whereas there is no reference to the remaining services in Classes 41 and 42. Considering that a high degree of distinctiveness is accepted to be proven for the entire category of telecommunications in Class 38, there is no need to determine whether or not reputation is indeed shown for television broadcasting in Class 38, specifically mentioned in the list of services of earlier European Union trade mark No 10 326 809. Accepting that a high degree of distinctiveness and reputation is proven for telecommunications is tantamount to accepting a high degree of distinctiveness and reputation for all possible services belonging to this category.

Consequently, the assessment of the distinctiveness of the earlier marks for the remaining goods and services will rest on their distinctiveness per se.

European Union trade mark registration No 5 717 971 for the word mark ‘DNA’ has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory, since the element ‘DNA’ is not descriptive or is of limited distinctiveness in relation to these goods and services.

Considering what has been stated above in section c) of this decision, the distinctiveness of earlier European Union trade mark registration No 10 326 809 must be seen as low for some of the goods and services in question, namely scientific services and research relating thereto in Class 42, since the element ‘DNA’ is weak in relation to those services for the relevant professional public and the stylisation of the earlier mark is not striking enough to alter this perception. The mark has a normal degree of distinctiveness for the remaining goods and services, in relation to which it has no meaning from the perspective of the public in the relevant territory.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods and services are partly identical, partly similar (to different degrees) and partly dissimilar. The signs are similar on account of the coinciding letters ‘DNA’, which constitute the whole of earlier European Union trade mark No 10 326 809 and are included, and identifiable as an independent element, in earlier European Union trade mark No 5 717 971 and in the contested sign. The marks display differences as a result of the additional verbal elements of the contested sign and the figurative elements of earlier European Union trade mark No 5 717 971.

The additional words of the contested sign will not go unnoticed by the relevant consumers. However, the coinciding element, ‘DNA’, of the marks under comparison is distinguishable in the contested sign and plays an independent and distinctive role in it in relation to some of the goods and services in question. It is the sole element of earlier European Union trade mark No 10 326 809 and the only verbal element of earlier European Union trade mark No 5 717 971. As seen above, the verbal component usually has a stronger impact on the consumer than the figurative component of the mark. Consequently, it is rather relevant that the verbal element ‘DNA’ of the earlier marks, which is inherently distinctive for some of the goods and services at issue, is entirely included in the contested sign.

Consequently, given that the distinctive verbal element ‘DNA’ of the earlier marks is reproduced in its entirety in the contested sign, it is very likely that the relevant public will at least associate the contested sign with the earlier marks in relation to goods and services that are identical or similar and for which this element has normal distinctiveness. This finding is true even for those goods and services for which the degree of attention will be higher than average. In this regard, even consumers with a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Therefore, taking into account that the earlier marks have a normal degree of distinctiveness per se for some of the relevant goods and services, the Opposition Division considers that the similarities between the signs are sufficient to lead to a likelihood of confusion, including a likelihood of association, between the marks in relation to the following goods and services:

Class 16: Decoration and art materials and media; printed matter; disposable paper products; filtering materials of paper; gums [adhesives] for stationery or household purposes; works of art and figurines of paper and cardboard, and architects’ models; paper and cardboard; stationery and educational supplies; bags and articles for packaging, wrapping and storage of paper, cardboard or plastics.

Class 42: Design services; IT services; authentication and quality control.

Therefore, the opposition is partly well founded on the basis of the opponent’s earlier European Union trade marks No 10 326 809 and No 5 717 971.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar (to different degrees) to the goods and services of the earlier trade marks.

On the other hand, with regard to the scientific services and research relating thereto in Class 42 of earlier European Union trade mark No 5 717 971 and the contested testing; science and technology services in Class 42 and human healthcare services in Class 44, the element that the marks under comparison have in common, ‘DNA’, has limited distinctiveness, since these services may concern the medical and scientific fields. Although the marks include the identical verbal element ‘DNA’, the signs have a number of additional differing elements that have no counterparts in the other mark and that lead to a different overall impression in cases where the common element is of only limited distinctiveness.

As seen above, the earlier marks have acquired a high degree of distinctiveness in Finland for telecommunications in Class 38.

Nevertheless, these services are clearly dissimilar to the abovementioned contested services, namely testing; science and technology services in Class 42 and human healthcare services in Class 44. The services under comparison have different natures, purposes and methods of use and satisfy different consumer needs. They are not usually provided by the same undertaking or economically-linked undertakings and are neither complementary nor in competition.

Consequently, the finding that the earlier marks have acquired a high degree of distinctiveness in Finland in relation to telecommunications in Class 38 has no impact on the finding that in these circumstances, considering the signs as a whole, the differences between them prevail over their similarities, so that the overall impressions of the marks are similar only to a low degree. Consequently, bearing in mind the visual, aural and conceptual differences between the marks and the higher than average degree of attention of the public to these services, the Opposition Division finds that there is no likelihood of confusion on the part of the relevant public in relation to the relevant testing; science and technology services in Class 42 and human healthcare services in Class 44.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

Consequently, the examination continues in relation to the remaining grounds of the opposition, namely Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

According to the opponent, earlier European Union trade mark No 10 326 809 for the word mark ‘DNA’ and earlier European Union trade mark No 5 717 971 for the figurative mark have a reputation in Finland.

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 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

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. Reputation of the earlier trade marks

According to the opponent, the earlier trade marks have a reputation in Finland.

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade marks has already been examined 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.

Consequently, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade marks enjoy a certain degree of recognition among the relevant public, which leads to the conclusion that the earlier marks enjoy some degree of reputation within the meaning of Article 8(5) EUTMR for telecommunications in Class 38. Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR such as, for example, the degree of similarity between the signs, the inherent characteristics of the earlier trade mark, the type of goods and services in question, the relevant consumers, etc.

3. The ‘link’ between the signs

As seen above, the earlier marks are reputed and the signs are similar. 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.

The establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

According to the Court of Justice of the European Union,

It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 48.)

The Court of Justice has also noted,

… that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 51 and 52.)

The services of the earlier trade marks for which reputation has been proven are telecommunications in Class 38. The contested goods and services for which the opposition is not successful under Article 8(1)(b) EUTMR are money holders in Class 16, testing; science and technology services in Class 42 and human healthcare services; hygienic care for animals; human hygiene and beauty care; agriculture, aquaculture, horticulture and forestry services; animal grooming services in Class 44.

When analysing whether a link exists, consideration must be given to the fact that the goods and services in question constitute completely distinct market sectors that have no material overlap and, in essence, have nothing whatsoever in common. The goods and services covered by the trade marks in conflict are of different natures and have different purposes. They have completely divergent distribution channels, target consumers with different needs and are offered by different companies or suppliers. Although the earlier trade marks enjoy a reputation for certain services, the degree of the earlier marks’ reputation demonstrated by the opponent does not imply that it is of such a strength that it produces effects beyond the relevant market sector and triggers a link between the signs in completely different areas of the economy, such as the abovementioned sectors. It is unlikely that, when intending to purchase the contested goods and services in Classes 16, 42 and 44, the relevant public will link them to trade marks that have a reputation for services in the sector of telecommunications. Therefore, the goods and services at issue have nothing whatsoever in common and this large gap makes it unlikely that the contested mark would remind the relevant consumer of the earlier marks.

Even though the relevant section of the public for the goods and services in conflict overlaps to some extent, the goods and services at issue are so different that the later mark is unlikely to bring the earlier marks to mind among the relevant public.

The opponent had argued that some of the contested services may be provided online by means of different technical and communication services. However, the same reasoning could be applied essentially for all goods and services belonging to any sector. The fact that various goods and services can be offered through different communication channels could not be sufficient in itself to trigger a link between them and telecommunication services.

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

Therefore, given that the relevant public is unlikely to establish a link between the trade marks at issue, it is considered that the use of the contested trade mark will not take advantage of or be detrimental to the distinctive character or repute of the earlier trade marks as required by Article 8(5) EUTMR. Indeed, as one of the necessary requirements is not met, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Begoña URIARTE VALIENTE

Alexandra APOSTOLAKIS

María Belén IBARRA DE DIEGO

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.