OPPOSITION No B 2 684 465

Enterprise Holdings, Inc., 600 Corporate Park Drive, 63105 St. Louis, United States of America (opponent), represented by Lewis Silkin LLP, 5 Chancery Lane Clifford's Inn, EC4A 1BL London, United Kingdom (professional representative)

a g a i n s t

Suprimmo S.A., 76 Domaine Op Der Haard, 4970, Bettange-Sur-Mess, Luxembourg (applicant), represented by Dennemeyer & Associates, 55 rue des Bruyères, 1274 Howald, Luxembourg (professional representative).

On 18/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 684 465 is upheld for all the contested goods and services.

2. European Union trade mark application No 14 330 815 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 330 815 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 5 323 126 for the figurative mark for which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR. The opponent also based its opposition on other earlier marks and rights in relation to which it invoked Article 8(1)(b), Article 8(4) and (5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier EUTM mark No 5 323 126 , for which the opponent claimed repute in Estonia, Netherlands, Czech Republic, European Union, Denmark, United Kingdom, Hungary, Poland, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg, Ireland.

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 will 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 for 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: 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. Reputation of the earlier trade mark

According to the opponent, the earlier European Union trade mark has a reputation in Estonia, Netherlands, Czech Republic, European Union, Denmark, United Kingdom, Hungary, Poland, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and Ireland.

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

In the present case, the contested trade mark was filed on 06/07/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the above mentioned European Countries prior to that date. The evidence must also show that the reputation was acquired for the services for which the opponent has claimed reputation, namely:

Class 39: Vehicle rental and leasing services; and reservation services for the rental and leasing of vehicles.

The opposition is directed against the following goods and services:

Class 12: Vehicles and apparatus for locomotion by air and/or water; electrically operated wheelchairs; electric scooters; electric bicycles; electrically operated scooters; parts and fittings for vehicles and apparatus for locomotion, in particular couplings for land vehicles, shock absorbing springs, anti-glare devices, headrest for seat, anti-theft apparatus, horns, hoods, bodies for vehicles, chains for land vehicles, chassis, turn signals, bumper bars, handlebars, anti-theft devices, reversing alarms, luggage carriers, torsion bars, gear boxes, hoods, engine covers, transmission chains for land vehicles, tire patches, repair outfits for inner tubes, driving chains for land vehicles, torque converters for land vehicles, reduction gears for land vehicles, turn signals, clutches for land vehicles, gearing for land vehicles, windscreen wipers, brake facings, brake shoes, brake segments, brakes, hydraulic circuits, seat covers, wheel hubs, windscreens, pneumatic tires [tyres], air pumps, luggage carriers, propulsion mechanisms for land vehicles, tow bars, suspension springs, rearview mirrors, wheels, safety belt for seat, saddle seats, transmission mechanisms, for land vehicles, windows, trailers [vehicles].

Class 37: Installation, maintenance and repair of parts, fittings and spare parts for vehicles and apparatus for locomotion by land, air or water; maintenance, repair and cleaning of vehicles and apparatus for locomotion by land, air or water; rental of cleaning machines; vehicle breakdown assistance; repair information.

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

On 05/12/2017 the opponent submitted, inter alia, the following evidence:

• Witness statement dated 31/01/2017 of Aaron Newell, a legal advisor and representative of the opponent, along with several annexes, such as:

• Press release from Enterprise website at https://www.enterprisealive.co.uk/about-us/global-locations/ which gives information on the opponent’s business showing that Enterprise has over 9,000 locations worldwide, including 895 in Europe (440 in the United Kingdom, 25 in Ireland, 190 in Germany and 110 in Spain).

• Article from the web page https://www.enterpriseholdings.com/en/financial-information/.html where it is underlined that the company’s revenue is more than $20.9 billion and that Enterprise Holdings and its affiliates own nearly 1.9 million cars and trucks. Diagram showing the Enterprise’s remarkable growth in terms of worldwide revenue in billions (in 2016 over 20 billion), vehicles (in 2016 over 1.8 million), locations (in 2016 over 9,000), employees (in 2016 over 95,000);

• Article from Forbes (an American business magazine) that rates Enterprise as the 15th largest privately-owned company in the United States as at the end of the 2015 fiscal year.

• Judgment handed down on 13 January 2015 by the High Court of Justice (England and Wales), acting as a CTM Court (Enterprise Holdings, Inc v Europcar Group United Kingdom Ltd & Anor). This Judgment refers to a legal action of Enterprise (the opponent) against Europcar’s use of a lower-case ‘e’ mark in Europe in 2012 and 2013 in relation to rental of vehicles. This judgment stated, inter alia, that Europcar’s use of a lower case ‘e’ mark infringed Enterprise’s rights and that the Enterprise ‘e’ logo had acquired a reputation in the United Kingdom.

• Report promoted by the United Kingdom government and carried out by the ‘Competition & Market Authority’ entitled ‘Short-term car rental in European Union’ where Enterprise was considered one of “five major pan-European vehicle rental companies who (alongside Avis-Budget, Europcar, Hertz and Sixt) in total represents around two thirds of the United Kingdom and European markets.

• Witness statement dated 11/12/2013 of Leslie de Chernatony, an independent brand expert and honorary professor of brand marketing at Aston Business School, stating, inter alia, that the ‘Enterprise lower case ‘e’ has a life of its own in terms of its role as a badge of origin of Enterprise’s business and would be identified by relevant consumer as a separate trade mark’. In this statement, there are also references to the development of the opponent’s company from the beginning (founded in the USA in 1957) until its extension to the United Kingdom market in 1992 and including the change of the stylization of the letter ‘e’ from the old logo to the new logo (i.e. ). The statement is supported by documents showing, inter alia, that the trade mark ‘e’ as well as the trademark ‘enterprise’ are used on websites and stickers and in advertising, promotional material and other online activities, as well as on the rear bumpers of the opponent’s large fleet of rental vehicles. These documents are comprised of, in particular: the Euromonitor Report which demonstrates that between 2008 and 2012 Enterprise has increased its United Kingdom market share from around 18% to 30% to become the leading vehicle hire business in the United Kingdom; Enterprise’s web page, where the company’s achievements and awards are shown; photos showing the use of the logo ‘e’ in different contexts, for example as a shop sign, car directional signage and dividers in airports; printouts from web pages of its social networks, such as Facebook, Twitter and YouTube, and photos of cars, packages, and billboards showing the ‘e’ logo; photos of gadgets and an advertising sign showing the ‘enterprise’ logo, photos of shop signs showing the mark ‘enterprise’; a printout of a business card, a letterhead, DL envelops, gadgets, post notes, mouse pads and vehicle tax disc holders showing the mark ‘enterprise’.

• Witness statement dated 11/12/2012 of Philip Malivoire, an independent market research consultant. He was instructed by the opponent to undertake two surveys in the United Kingdom in October 2013 (a pilot survey) – with 101 interviews – and on November 2013 – with another 1 038 interviews – to identify consumers’ reactions to an image showing Enterprise’s trade mark made up of the logo ‘e’ (i.e. ). In the first interview, 38% of the respondents, and in the second interview 36% of the respondents, said that it brought Enterprise to their mind when they were shown the letter ‘e’.

• Witness statement dated 11/12/2013 of Dary Scales, the opponent’s Vice President and Finance Director for the United Kingdom and Ireland. In this statement Mr Daryl Scales points out that the opponent is the largest vehicle rental service provider in the world, measured by its revenue, number of employees and fleet size. He also stresses that Enterprise has always used a lower case ‘e’ in respect of its vehicle hire business and that it is an historical branding, which it carried over into the United Kingdom and more widely throughout Europe, from the USA, where the business began using an ‘e’ logo as far back as the late 1950’s and/or early 1960’s. Examples of the use of the ‘e’ logo are given in the Annexes attached to the statement, such as use on vehicle stickers, key rings and other gadgets, street signage, use on vehicle rental comparison websites, on airport shuttle buses, on “direction” signs at airports, use on Facebook, Twitter and other social networks, use on directional signage at airports in the United Kingdom, as an office sign for outlets in the United Kingdom, use in an advertisement from 2008/2009, in publications, including the daily magazine Rental (dated May 2009), in United Kingdom television advertisements, broadcast since the middle of 2012, and use on rental cars themselves. In the statement, Mr. Daryl Scales also makes reference to the rapid expansion of the business (vehicle rental) in the United Kingdom increases, year on year, achieving 30,1% of the market share in 2012, and shows a significant company expenditure in advertising between 2010 and 2013 (Yellow pages) and between 2011-2013 (television advertising), in fixed and mobile display (in United Kingdom) advertising, and in ‘Ad Word’, ‘pay per click’ and other on line advertising means between 2008 and 2012 (in the United Kingdom, Ireland and Germany).

• A company’ brochure entitled ‘Opportunity. Growth. Success’ (which is not dated) regarding the company history, growth and values, where the logo ‘e’ and the logo ‘e enterprise’ are shown.

• Reports regarding the number of visitors and the overall performance of the opponent’s website, but no reference is made to the ‘e’ logo.

As far as these different affidavits/statements are concerned, Article 10(4) EUTMDR (former Rule 22(4) EUTMIR, in force before 01/10/2017) expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter. However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish reputation, since such statements have to be considered as having less probative value than physical evidence or evidence originating from independent sources. Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

Even though a significant part of the evidence is made up of the witness statements, the four abovementioned declarations, made by interested parties (e.g. the statement of Dary Scales, the opponent’s Vice President and Finance Director for the United Kingdom and Ireland), as well as by independent parties (e.g. the statement dated Leslie de Chernatony, an independent brand expert and the statement of Philip Malivoire, an independent market research consultant), are long and detailed, and the content of these documents is supported by other relevant items of evidence which originated from independent third-parties (such as judgments, samples of advertisements and surveys). In addition, they also include examples of use of the mark (i.e. the ‘e’ logo) in commerce, on websites, in advertisements, on airport shuttle buses, on cars and from other publicly available sources. This evidence shows that the trade mark is used either on its own or with other components, such as the elements ‘Enterprise’ and ‘rent a car’.

It is true that not all the evidence filed by the opponent refers directly to the ‘e’ logo, since some documents, such as the press release from Enterprise website, part of the witness statements of Mr. Leslie de Chernatony and Mr. Dary Scales and the report promoted by the United Kingdom government, make reference to the rapid expansion of the opponent’s company business, the company’s expenditure in advertising or to the opponent’s leading position in United Kingdom in the vehicle rental sector, without specifying in relation to which mark this leading position was achieved.

In this regard it is important to note that, when evaluating the evidence submitted, the Opposition Division has to make an overall assessment of the evidence, and all of the circumstances of the case have to be taken into account. Furthermore, all the materials submitted must be assessed in conjunction with each other. Individual items of evidence may be insufficient by themselves to prove the reputation of the earlier mark, but may contribute to proving it in combination with other documents and information.

In the case at issue, the evidence regarding general information on the expansion, achievements and advertising expenditure of the opponent’s company are filed in conjunction with other documents, specifically related to the mark for which reputation is claimed, such as the judgment of the High Court of Justice (England and Wales), confirming the acquired reputation of Enterprise ‘e’ logo in United Kingdom, the results of the surveys carried out in United Kingdom regarding the ‘e’ logo and the examples of use of the ‘e’ logo in commerce and advertisement.

Therefore, the above mentioned evidence specifically relates to the mark at issue (i.e. ), in conjunction with more general information, provided by the opponent, related to the advertising expenditure, the number of vehicles rented and the opponent’s total number of offices and market share (30% of all vehicle rental companies in the United Kingdom), clearly demonstrate that the opponent has made a substantial, intensive and long-standing use of its mark, and that a significant part of the relevant public in the United Kingdom knows and recognises it. In fact, as most of the evidence filed by the opponent refers to United Kingdom it has to be concluded that there is a certain degree of recognition of the mark in relation to the public in United Kingdom.

It is also clear from the evidence that the mark has been used in relation to ‘vehicle rental services’ for a substantial period of time, dating back to the end of the previous century and that the reputation of the ‘e’ logo had been acquired prior to the filing date of the contested trade mark (i.e. 06/07/2015).

Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade mark enjoys a certain degree of recognition among the relevant public in United Kingdom.

However, the evidence does not succeed in establishing that the trade mark has a reputation for all of the services on which the opposition is based, and for which reputation has been claimed, as the evidence, and also the opponent’s arguments, mainly relate to ‘vehicle rental services’ in Class 39.

2. The signs

Earlier trade mark	Contested sign

The relevant territory is 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).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C 514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore a risk of injury for only part of the relevant public of the European Union is sufficient to reject the contested application.

The word element ‘Truck’ of the contested sign is meaningful in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking parts of the public, for instance the United Kingdom.

The earlier trade mark is a figurative mark consisting of a lower case letter ‘e’ with a triple outline (white/green/white), against a green rectangular background, characterised by the fact that the horizontal lines cross the curve of the letter 'e' on its left. The contested sign is the figurative mark ‘e Truck’. The lower case letter ‘e’ is depicted in green and is superimposed on a white circular background with a green outline around it, on the bottom of which there is a depiction of an electric plug. The word ‘Truck’ is represented in rather standard black italic typeface.

The letter ‘e’ of the earlier mark has no specific meaning in relation to the relevant services, and, therefore, it is considered distinctive to a normal degree.

As have been seen from the examination of the evidence in the previous section, the earlier mark, as a whole, has gained an enhanced distinctiveness through reputation for vehicle rental services.

As the element ‘e’ of the contested sign is represented in conjunction with the depiction of an electric plug, the combination of these two elements will be associated with the concept of electric/electricity. Bearing in mind that the goods in Class 12 and the services in Class 37 can be related to electric goods, it is considered that this combination of elements may suggest a characteristic of these goods and services (i.e. that the goods are electric vehicles, or their parts thereof, and the services are provided in relation to electric goods). Therefore, the degree of distinctiveness of the letter ‘e’ in the contested sign in conjunction with the electric plug is reduced.

The word ‘Truck’ of the contested sign refers, in English, to ‘a large vehicle that is used to transport goods by road’. Bearing in mind that part of the relevant goods and services in Classes 12 and 37 are vehicle parts, or are related to vehicles, the word ‘Truck’ is weak in relation to them as it can indicate that they are suitable for, or in relation to trucks. The word ‘Truck’ is distinctive in relation to the remaining goods and services, such as electric scooters in Class 12 and rental of cleaning machine in Class 37 as it is neither descriptive nor allusive in relation to these goods and services.

The rectangular background of the earlier mark, as well as the circle of the contested sign, are simple geometric shapes that will be perceived by consumers as merely decorative elements and are, therefore, less distinctive.

The marks have no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the letter ‘e’ which constitutes the only verbal element of the earlier mark and is fully included at the beginning of the contested sign where in general consumers pay more attention. The relevance of the first part of the signs to consumers is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Moreover, the letters ‘e’ of both signs share some similarities as they are both represented in lower case and they are both depicted in green and white (i.e. in the earlier mark the letter ‘e’ is in green and white against a green rectangle, and in the contested sign the letter ’e’ is depicted in green and superimposed on a white circle with a green outline). On the other hand, they differ in that the horizontal lines of letter ‘e’ the earlier mark cross over the left curve of the letter and is placed within a rectangular background, while the letter ‘e’ of the contested sign is superimposed on a circular background. The signs differ also in the additional figurative element (i.e. the depiction of a plug) and the word element ‘Truck’ of the contested sign that is weak for a part of the goods and services and distinctive for the remaining goods and services.

Bearing in mind the above considerations and, in particular, that in both signs the common letter ‘e’ is represented in green and white, it is concluded that the signs are visually similar to at least a low degree.

Aurally, the pronunciation of the marks coincides in the sound of the letter ‘e’ which, as said above, is the only verbal element of the earlier mark and the first verbal element of the contested sign. The pronunciation differs in the sound of the word ‛Truck’ of the contested mark which has no respective counterpart in the earlier mark.

The findings made under the visual comparison, about the beginning of the signs, and the level of distinctiveness of the differing word ‘Truck’, also apply to the aural comparison. Therefore, it is concluded that the signs are aurally similar to at least a low degree.

Conceptually, both the earlier mark and the contested sign contain a figurative representation of a single letter ’e’. The contested sign also includes the concept related to the verbal element ‘Truck’, that is weak in relation to a part of goods and services, as well as the concept related to the figurative element (i.e. the electric plug), that as seen above, has a reduced distinctiveness.

Even if the letter ‘e’ of the contested sign, in conjunction with the depiction of an electric plug, will be associated with the concept of electric/electricity, the fact remains that both signs will be perceived as containing a reference to the same single letter ‘e’, in the same combination of colours and therefore they are considered to be conceptually similar to a low degree.

Taking into account that the signs have been found similar in at least one aspect of the comparison, the examination of the existence of a risk of injury will proceed.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar to some extent. 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 are visually and aurally similar at least to a low degree, to the extent that they both have the letter ‘e’ in common, which also forms the entire distinctive word element of the earlier mark and represents the first word element of the contested sign. Moreover, the fact that in both signs the letter ‘e’ is depicted in green and white lower case typeface, as explained above, increases the visual similarities between the signs. It is true that the signs differs in some elements, but part of them, such as the word element ‘Truck’, have less impact in the comparison of the signs in relation to part of the goods and services for the reasons already explained above.

It should also be remembered that the degree of similarity of the signs required under Article 8(5) EUTMR differs from the one required under Article 8(1)(b) EUTMR. Thus, whereas the protection provided for under Article 8(1)(b) EUTMR is conditional upon a finding of a degree of similarity between the marks at issue such that there is a likelihood of confusion between them on the part of the relevant section of the public, the existence of such a likelihood is not necessary for the protection conferred by Article 8(5) EUTMR. Accordingly, the types of injury referred to in Article 8(5) EUTMR may result from a lesser degree of similarity between the marks in question, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them (see judgment of 24/03/2011, C-552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 53 and the case-law cited therein).

As regards the distinctiveness of the earlier mark, reference is made to the conclusions drawn in the section b) according to which the earlier mark has gained an enhanced distinctiveness as it has been found to enjoy a certain reputation among the relevant public in the United Kingdom in connection with ‘vehicle rental services’ in Class 39.

Even though the contested goods and services in Classes 12 and 37 come from different economic sectors from the opponent’s services in Class 39, they have some points in common and are therefore connected to a certain degree. The contested services in Class 37, namely installation, maintenance and repair of parts, fittings and spare parts for vehicles and apparatus for locomotion by land, air or water; maintenance, repair and cleaning of vehicles and apparatus for locomotion by land, air or water; vehicle breakdown assistance; repair information refer to vehicles that are also the object of the opponent’s services for which the earlier mark is reputed (i.e. ‘vehicle rental services’). Moreover it is quite common that vehicle repair, recovery and maintenance services are offered as extra services by rental companies to their customers. Therefore, the Opposition Division considers these contested services are sufficiently close to the ‘vehicle rental services’ so that consumers could make a connection or association with the earlier reputed mark of the Opponent. As to the rest of the contested services in Class 37 (i.e. rental of cleaning machines) it has to be underlined that rental companies use cleaning machines to clean and to prepare the vehicles for the next rental customer. Yet, in such case, cleaning machines are used directly by the company and are not rented to third parties, as are the contested services. However, nowadays it has become usual for companies to diversify their activities on several interconnected markets. Therefore, it cannot be excluded that companies, such as the opponent's, offer services, such as the contested services, to their customers to clean their vehicle, and as a consequence, it cannot be excluded that the contested sign, in relation to ‘rental services of cleaning machine’, will remind the relevant consumers of the earlier mark. There is also a link between the contested goods in Class 12, that are vehicle-related, and the earlier services. In fact ‘vehicles’ satisfy a transportation/travelling need as does the applicant’s ‘vehicles rental services’ which allow people to rent a vehicles for travelling purposes. Moreover vehicle ownership and temporary leasing and/or rental arrangements are increasingly becoming two alternatives to satisfy the same transportation need, as also has been shown by a document filed by the opponent (a press release issued by Europcar following independent study in 2011), according to which, the need to own a vehicle has declined in favour of alternative services such as vehicle rental.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that, when encountering the contested mark, the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR. (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96).

4. 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 detriment or unfair advantage may be only potential in opposition proceedings, 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 ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, 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 demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims that, given the various factors (i.e. the significant market leading reputation of Enterprise, its pervasive and ubiquitous use of the mark, the degree of similarity between the marks at issue, and the identical target market for vehicle hire and related products and services), the opponent’s ‘e’ mark will be immediately and strongly brought to mind by the contested mark and, accordingly, there is a high likelihood that the applicant will take unfair advantage of the distinctive character and the repute of the earlier mark.

Furthermore, the opponent also claims that the use of the contested trade mark would be detrimental to the distinctive character of the earlier trade mark (through tarnishing and blurring). In fact, by introducing the contested sign, the applicant will interfere with the ability of Enterprise’s branding to exclusively refer to and recall Enterprise. Finally the opponent’s claims that the reputation achieved by its earlier mark (i.e. the lower case ‘e’) could be irreparably harmed in the event that the applicant’s services do not live up to the reputation of the opponent's.

In other words, the opponent claims that the use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to the distinctive character and the repute of the earlier trade mark.

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 (06/07/2012, 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 bases its claim on the following.

• It is clear that the use of the contested mark would create a substantial and material risk that the applicant uses Enterprise’s significant investment in developing its reputation and in marketing and promoting its ‘e’ logo to its own advantage;

• this is because, inter alia, Enterprise’s ‘e’ logo is indicative of its business, which will lead consumers to see a link or an association between the opponent’s and the applicant’s companies when encountering the contested sign.

• on this basis there is a clear possibility and likelihood that the applicant might freeride on the coattails of Enterprise’s branding in order to benefit from and exploit its power of attraction.

According to the Court of Justice of the European Union

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

In the present case, it has been found that the signs at issue are similar to the extent that they coincide in the letter ‘e’ and to the extent that the letters ‘e’ of both signs share some similarities in their depictions and, especially, in their colours. Moreover, the earlier mark’s services display a strong, or sufficiently close connection to the contested goods and services in Classes 12 and 39.

It must be also recalled that the protection under Article 8(5) EUTMR extends to all cases where use of the contested trade mark is likely to have an adverse effect on the earlier mark, in the sense that it is, inter alia, likely to result in misappropriation of the powers of attraction or exploitation of the earlier mark’s image and prestige (unfair advantage of the distinctive character or repute).

Furthermore, taking unfair advantage does not necessarily require a deliberate intention to exploit the goodwill attached to someone else’s trade mark. The concept of taking unfair advantage ‘concerns the risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation’ (judgments of 19/06/2008, T-93/06, Mineral Spa, EU:T:2008:215, § 40; 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40; 30/01/2008, T-128/06, Camelo, EU:T:2008:22, § 46).

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the repute of the earlier trade mark, since, owing to the coincidence in the element ‘e’ of the signs and the similar combination of colours (i.e. white and green) in which this letter ‘e’ is depicted in both marks, as well as the connection between the goods and services in question (see the explanations above), it is likely that, by using the contested trade mark, the applicant will unfairly benefit from the repute and the selling power of the earlier trade mark. The applicant could take unfair advantage of the fact that the public knows the earlier trade mark well, and could introduce its own trade mark, without incurring any great risk, or the costs of launching a totally unknown trade mark on the market and yet still benefit from the reputation of the earlier mark.

Other types of injury

The opponent also argues that use of the contested trade mark would be detrimental to the distinctive character and the repute of the earlier trade mark.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.

5. Conclusion

As mentioned above, the comparison of the signs at issue under Article 8(5) EUTMR has been performed in relation to the English-speaking part of the public.

As stated above in section b) of this decision, a risk of injury for only part of the relevant public of the European Union is sufficient to reject the contested application.

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

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

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

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Martina GALLE

Angela DI BLASIO

Nicole Anne CLARKE

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.