OPPOSITION No B 2 775 040

Epay AD, 16, Ivan Vazov Str., 1000 Sofia, Bulgaria (opponent), represented by Vasil Pavlov Pavlov, 1, Stefan Stambolov Blvd., floor 1, 1303 Sofia, Bulgaria (professional representative)

a g a i n s t

WePay Inc., 350 Convention Way, Suite 200, 94063 Redwood City, United States of America (applicant), represented by Osborne Clarke LLP, One London Wall, EC2Y 5EB London, United Kingdom (professional representative).

On 07/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 775 040 is partially upheld, namely for the following contested goods and services:

Class 9: Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; other digital recording media.

Class 38: Telecommunications.

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; providing temporary use of non-downloadable computer programs; providing temporary use of non-downloadable business software; providing temporary use of non-downloadable software applications accessible via a website; providing temporary use of non-downloadable software for importing and managing data; website hosting services; providing an online website for creating and hosting micro websites for businesses; computer services; computer programming.

2. European Union trade mark application No 14 500 706 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.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 14 500 706 for the word mark ‘wepay’. The opposition is based on Bulgarian trade mark registrations No 70 143 for the word mark ‘ePay’ and No 67 787 for the word mark ‘ePay.bg’. The opponent invoked Articles 8(1)(b) and 8(5) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely the Bulgarian trade mark registrations No 70 143 for the word mark ‘ePay’ and No 67 787 for the word mark ‘ePay.bg’.

The date of filing of the contested application is 24/08/2015. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Bulgaria from 24/08/2010 to 23/08/2015 inclusive.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade marks for the goods and services on which the opposition is based, namely the following:

Bulgarian trade mark registration No 67 787 ‘ePay.bg’

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, automatic vending machines and mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers, fire-extinguishing apparatus.

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

Class 36: Insurance services, financial affairs, monetary affairs, real estate affairs.

Class 38: Telecommunications.

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, legal services.

Bulgarian trade mark registration No 70 143 ‘ePay’

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, automatic vending machines and mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers, fire-extinguishing apparatus.

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

Class 36: Insurance services, financial affairs, monetary affairs, real estate affairs.

Class 38: Telecommunications.

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, legal services.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 06/07/2017, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 11/09/2017 to submit evidence of use of the earlier trade marks. On 08/09/2017, within the time limit, the opponent submitted evidence of use. Moreover, in its observations of 08/09/2017, filed with the purpose of proving the genuine use of its earlier marks, the opponent refers to the evidence filed on 07/02/2017 with the purpose of proving the reputation of the above-mentioned earlier rights. The Opposition Division notes that the evidence in both submissions as to the substance is the same, however, the enumeration of the annexes is slightly different. The Opposition Division will proceed with the presentation of the evidence as filed on 07/02/2017.

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 to be taken into account is the following:

 Certificates from the Bulgarian Patent Office (Annex 1): Enclosure 1 is the certificate of trade mark registration ’ePay.bg’ proving that the application for the mark was filed on 26/10/2006 and that it was registered on 21/11/2008. The first owner of the earlier mark was the Bulgarian company Datamax AD. Enclosure 2 is a certificate recording a transfer of the right, made on 09/08/2010 by Datamax AD to the current owner of the mark and the opponent in the present proceedings, the Bulgarian company ePay AD. The enclosures 3 and 4 refer to the certificate and the license agreement regarding the earlier trade mark ‘ePay’. Enclosures 5 and 6 are the renewal certificates of both earlier trade marks.

 Annex 2 refers to the other opponent’s trade marks ‘ePay GSM’ registration No 63 324 and ‘ePay Voice’ with the registration No 44 552, which do not constitute the basis for the opposition in the present case.

 Excerpt from Borika’s website (Annex 3): Borika is a banking organisation that manages payments made using cards; it is the sole system for servicing bank card payments in the territory of Bulgaria, for which it is licensed by the Bulgarian National Bank. The excerpt is dated 06/03/2013 and explains that the ePay.bg electronic payment system is connected to Borika and that, through the ePay system, all holders of debit cards issued by 26 banks can pay for goods and services over the internet. These services are related to the earlier ‘ePay.bg’ trade mark. A second excerpt from the website shows the chronology of the development of the Borika card system, stating that, since 18/10/1999, the electronic system of payment for goods and services under the ‘ePay.bg’ trade mark with debit cards over the internet has been connected to Borika.

 Annex 4 refers to the agreement between DATAMAX JSC and EPAY JSC dated 11/01/2006 for joint exploitation and maintenance of electronic online payment system under ‘ePay’ trade mark. Further documents contained in this annex refer to declarations of Gergana Panayotova and Georgi Marinov, the CEO of DATAMAX JSC regarding the actual list of shareholders of DATAMAX JSC and EPAY JSC.

 Letter from a third party, issued on 21/05/2007 by the Executive Director of Borika (Annex 5, Enclosure 1), providing information on the increasing total numbers of banks whose bank cards have been accepted as payment methods by the online system since 2000, on the basis of contracts between Datamax AD and the specific banks, reaching a total of 23 banks in 2006. The earlier ‘ePay.bg’ is mentioned in the document and refers to the services relating with the electronic payment system.

 Bulletin, entitled ‘Commercial Banks in Bulgaria’, covering October-December 2006, issued by the Bulgarian National Bank (Annex 5, Enclosure 2) and listing under the heading ‘V. Balances and reports for incomes and expenses of the Commercial banks’ 32 commercial banks in alphabetical order.

 Affidavit issued by the CEO of Epay JSC, on 17/05/2016 (Annex 6, Enclosure 1), stating the number of unique registered users of the ‘ePay.bg’ electronic payment system for each year between 2006 and 2015. These data show an upward trend during this period and a large number of unique registered users of electronic payment system under the earlier mark ‘ePay.bg’ in 2015, bearing in mind the total population of Bulgaria.

 Letter from a third party, issued on 21/05/2007 by the Executive Director of Borika (Annex 6, Enclosure 2), stating the increasing total number of transactions through the electronic payment system under the earlier trade mark ‘ePay.bg’ from 2001 to 2006.

 Letter from a third party, issued on 14/12/2012 by a representative of Borika (Annex 6, Enclosure 3), stating the total numbers of transactions through the ePay system from January 2008 to October 2012. The total numbers of transactions through the system are large and there was a significant increase on the figures for the previous four-year period, 2003-2007. The earlier trade mark ‘ePay.bg’ is invoked in the document.

 Declaration signed on 2017/05/2016 by Gergana Panayotova, the CEO of Epay JSC, stating the total number of transactions using electronic payment system under the earlier mark ‘ePay.bg’ in the period 2012 – 2015.

 Letters from third parties and excerpts from some of their websites (Annex 7): letters, inter alia, from representatives of VIK Varna Ltd (water supply and sewerage company), dated 07/12/2011; VIK Sliven Ltd (water supply and sewerage company), dated 06/12/2011; and VIK Gabrovo Ltd (water supply and sewerage company). These letters state when these companies began to collaborate with the owner of the earlier marks and that the aim of their collaboration is to provide users of their services with the possibility of paying their bills or fees through the electronic payment system under the earlier ‘ePay.bg’ trade mark. Some of the letters state the total numbers of transactions made through the electronic system. The opponent also submitted excerpts from these company’s websites stating that bills or fees can be paid using the electronic payment system.

 Press cuttings (Annex 8): publications in various Bulgarian newspapers and online magazines covering the relevant period 2014-2015 and the period 2005-2009. 17 articles from the newspapers and magazines Dnevnik (six articles published on 23/03/2005, 04/04/2008, 18/04/2008, 14/05/2008, 12/06/2008 and 10/07/2009), Monitor (four articles published on 14/05/2008, 25/08/2008, 11/02/2009 and 10/04/2009), Konkurent (two articles published on 26/09/2007 and 27/09/2007), Computer World (No 42/2008) and Kapital (three articles published in the issues for the periods 17/05/2008-23/05/2008, 14/02/2009-20/02/2009 and 26/09/2009- 02/10/2009), distributed throughout the entire country, and an article from the newspaper Mont Pres (No 75 for the period 27/09/2007-01/10/2007), distributed in the region of Montana, regarding, inter alia, which service providers’ bills can be paid through the ePay.bg electronic system and how this can be done, and the increasing use of internet payments through ePay.bg in comparison with previous years.

16 publications (Annex 8 - the rest of publications) filed for the purpose of proving genuine use of the opponent’s earlier marks covering the period (2010 – 2015) appear, inter alia, in ‘clo.bg’, ‘capital.bg’, ‘Radar.bg’, computerworld.bg’, banker.bg’, ‘economic.bg’, ‘technews.bg’, ‘radar.bg’, manager.bg’, ‘Mediapool.bg’, ‘Newtrend.bg’, ‘Capital.bg’. In all these publication the earlier trade mark ‘ePay.bg’ appears in relation to the electronic payment system facilitating simple payments of bills and saving the transaction fees. Furthermore, the declaration of Gergana Panayotova, the CEO of Epay JSC states that in the period 2010 – 2015 the opponent used services of Google and Facebook to promote the electronic payment services under the earlier ‘ePay.bg’. The publications and, in particular, those referring to the 15^th anniversary of the existence of the opponent’s online payment platform under the earlier ‘ePay.bg’ illustrate an increase of the online payments and the same the economic success of the opponent.

The opponent under the earlier ‘ePay.bg’ sponsored the conference held 18-19.11.2015 in Sofia ‘Thrust, privacy and security of personal data in the digital world’ (sponsoring contract included in the evidence).

 Brochures (Annex 8): copies of brochures accompanied by declarations by the opponent and Datamax AD stating that the brochures were distributed at promotional events and in bank offices. The brochures explain how to make payments through the ePay.bg electronic payment system.

 Evidence of expenditure on advertising (Annex 8): Contract between Datamax AD and Kota 97 Ltd, dated 10/01/2005, for the provision of specialised public relations services for a total of BGN 10 000, excluding VAT (approx. EUR 5 000). The PR activities, information brochures and advertising flyers, direct marketing and developing a media plan for advertising. Al the materials referring to the online transactions under the ‘ePay.bg’ earlier trade mark.

Report on the event MTV Exit Bulgaria, prepared by United Partners Ltd for ePay.bg (Annex 8). The report explains that MTV Exit Bulgaria was a music event that took place on 29/08/2006 in South Park and the Black Box Club in Sofia, featuring foreign and Bulgarian artists. It attracted about 2 000 people electronic payment system (Annex 8).

Assessment of the evidence of use of the earlier marks

Place of use

Press cuttings, letters from third parties and various agreements show that the place of use of the earlier marks is Bulgaria. This can be inferred from the language of the documents (Bulgarian), the names of cities and addresses in Bulgaria and the currency mentioned in them (Lev).

Time of use

Most of the evidence refers to the use made within the relevant period. Therefore, it is concluded that the time of use has been proven.

In relation to the documents, in particular press cuttings, letters from third parties dated before the relevant time point the Opposition Division notes that they play a supporting role in relation to the means of evidence referring to the relevant period, especially press cuttings and 16 further publications. The Court held in this context that circumstances subsequent to the relevant point of time may make it possible to confirm or better assess the extent to which the trade mark was used during the relevant period and the real intentions of the proprietor during that time (order of 27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50, § 31). Therefore, it is concluded that the earlier mark was used in the relevant period.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents mentioned above, in particular, press cuttings, various publications and letters from third parties show convincingly that the opponent continuously invested in, promoted and conquered the online payments sector of the financial market in Bulgaria. Additionally, the figures mentioned in the affidavit refer to the content of the publications and show an upward trend during the relevant period and a large number of unique registered users of electronic payment system under the earlier marks in 2015, bearing in mind the total population of Bulgaria. The publications referring to the 15^th anniversary of the existence of the opponent’s online payment platform under the earlier marks show an increase of the online payments and the same the economic success of the opponent. The conferences and other events sponsored by the opponent under the earlier trade marks confirm the importance of their role and their relation to the services in question.

Nature of use

In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered. Nature of use requires, inter alia, that the earlier trade marks are used as business denominators identifying origin of the goods/services for the relevant public.

The applicant claims that the opponent did not prove the use in relation to the opponent’s earlier ‘ePay’ mark because in its opinion this sign merely constitutes a part of a domain name and exist in the market as such.

The Opposition Division does not share this opinion and states that it cannot be excluded that a domain name or a part of it may serve more than one purpose, namely apart from facilitating an access to a website address on the Internet, which gives its proprietor an online identity, it connects to a site on which the relevant goods and services appear. In the latter case, the opponent must prove that the relevant goods and services are offered under the trade mark contained in the domain name and these goods and services are either already marketed or they are about to be marketed and for which preparations by the undertaking to secure customers must be done by the opponent, particularly in the form for example of advertising campaigns.

In this context Article 18 and Article 47(2) EUTMR (Articles 15 and 42(2) EUTMR in the moment of filing of the opposition notice) require proof of genuine use in connection with the goods or services for which the trade mark is registered and which the opponent cites as justification for its opposition. Hence, the opponent has to show that the mark has been used as a trade mark on the market. As a trade mark has, inter alia, the function of operating as a link between the goods and services and the person responsible for their marketing, the proof of use must establish a clear link between the use of the mark and the relevant goods and services. As clearly indicated in Article 10(4) EUTMDR, it is not necessary for the mark to be affixed to the goods themselves (judgment of 12/12/2014, T-105/13 TrinkFix, EU:T:2014:1070, § 28-38) A representation of the mark on packaging, catalogues, advertising material or invoices relating to the goods and services in question constitutes direct evidence that the mark has been put to genuine use (see also paragraph 2.3.3.2 below).

Genuine use requires that use is made as a trade mark:

• not for purely illustrative purposes or on purely promotional goods or services,

• in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered (judgment of 11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 43).

In the case at hand, the Opposition Division observes that although the structure of the earlier marks in question evokes a domain name or/and a website address they exist on the financial market in Bulgaria as trade marks in a way that they allow consumers to distinguish the online payment services of the opponent from the services of other undertakings. The material submitted by the opponent illustrates clearly that the opponent is operating successfully in the sector of online payments in Bulgaria under the earlier rights in question and the documentation filed refers to the trade marks as to economic assets growing on importance due to considerable opponent’s investments in advertising and sponsorship.

The evidence relates to electronic payment services; however, there is no reference to the remaining goods and services for which the earlier ‘ePay’ and ‘ePay.bg’ trade marks have been registered.

The Opposition Division considers that in the present case the opponent showed the use of its earlier trade marks for electronic payment services, which constitute an independent subcategory of services within broad categories of the opponent’s financial affairs, monetary affairs registered in Class 36.

In the Aladin case, the GC held:

if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong.

Therefore, if the earlier mark has been registered for a broad category of goods or services but the opponent provides evidence of use only for specific goods or services falling within this category, this raises the question of whether the submitted evidence is to be regarded strictly as proof of use only for the particular goods or services, which are not mentioned as such in the list of goods or services, or for the broad category as specified in the registration.

Thus, protection is available only for the subcategory or subcategories to which the used goods or services belong if:

1. a trade mark had been registered for a category of goods or services:

(a) which is sufficiently broad to cover a number of subcategories other than in an arbitrary manner;

(b) that are capable of being perceived as being independent from each other;

and

2. it can be shown that the mark has been genuinely used in relation to only part of the initial broad specification.

As shown in the evidence filed by the opponent, the electronic payment or e-payment in comparison to traditional methods of making payments by using cheques or letters of credit refers to paying for goods and services on the Internet. It includes all financial operations using electronic devices, such as computers, smartphones or tablets. E-payments come with various methods, like credit or debit card payments or bank transfers. The most common online payments nowadays involve payments with credit cards. They are made instantly and are highly effective in particular for international transactions. Their progressive increase on popularity is shown in the letters issued by third parties and in the press cuttings.

Consequently, the Opposition Division will only consider this independent subcategory of electronic payments services in its further examination of the opposition.

The Opposition Division will now continue with the examination on the ground of Article 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark 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 marks

According to the opponent the earlier Bulgarian trade mark registrations No 70 143 ‘ePay’ and No 67 787 ‘ePay.bg’ enjoy reputation in Bulgaria in relation to financial affairs, monetary affairs; electronic payment services.

In the present case, the contested trade mark was filed on 24/08/2015. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in Bulgaria prior to that date. The evidence must also show that the reputation was acquired for the services for which the opponent has claimed reputation, as mentioned above.

The evidence submitted by the opponent has already been enumerated and analysed under the section Proof of use of the present decision and it shows that the opponent’s earlier trade marks have been genuinely used in relation to electronic payment services in Class 36. As mentioned above in the observations related to the proof of use of its earlier trade marks, the opponent referred to the material filed within the substantiation period in purpose to prove the reputation of its earlier rights.

After a thorough analysis of the evidence filed, it is clear that the earlier trade marks have been subject to a longstanding and intensive use and are generally known in the relevant market, where they enjoy a consolidated position, as has been attested by diverse independent sources like letters from third parties and various publications. Although some of the evidence is dated sometime after the contested trade mark’s filing date, it contains relevant information and, furthermore, account must be taken of the fact that the reputation of trade marks is, in general, acquired progressively and that the sector of electronic payment systems is not one of the most dynamic and is/was growing gradually. Consequently, the numerous various advertising campaigns, the total number of registered users and transactions shown in the evidence and the longstanding partnership with Bulgarian national household service providers and with most of the national banks for the electronic payment of bills and fees, all unequivocally show that the earlier marks enjoy a high degree of recognition among the relevant public.

However, the evidence does not succeed in establishing that earlier the trade marks have reputation for all the goods and services for which reputation has been claimed. The evidence relates to electronic payment services; however, there is little or no reference to the other services in relation to which the opponent was claiming the reputation.

Consequently, it is clear from the evidence that the earlier marks enjoy reputation in relation to electronic payment services only.

As far as the comparison of sign is concerned the Opposition Division will continue the comparison of the signs in relation to the earlier trade mark ‘ePay’ since it is more similar to the contested sign ‘wepay’.

2. The signs

ePay	wepay
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).

Both signs are word marks; the earlier mark is composed of the conjoined element ‘ePay’ and the contested sign consists of one element ‘wepay’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the sign is represented in upper or lower case characters.

The part of the public that speaks English, or has become familiar with the foreign word ‘pay’ in relation to electronic payment services, will associate the sequence of letters ‘ePay’ of the earlier sign with ‘electronic payment’ and the contested sign ‘wepay’’, as a conjunction of two words ‘we’ and ‘pay’ referring to people in general and the activity of payment. Therefore, for this part of the public, the elements ‘e’ and pay’ are non-distinctive. For the rest of the public, they have a normal degree of distinctiveness.

Therefore, the comparison of signs will be conducted in relation to the public in Bulgaria, which does not understand English.

Being word marks the signs have no element that could be considered clearly more dominant than other elements.

Visually and aurally, the signs are similar to the extent that they coincide in the sequence of letters ‘ePay’. They differ in the first letter ‘w’, of the contested sign. Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, the elements ‘ePay’ and ‘wepay’ are meaningless and therefore the conceptual aspect will not influence the comparison of the signs.

For the sake of completeness the Opposition Division would like to point out that the difference in the full point and the ending ‘bg’ of the earlier trade mark ‘ePay.bg’ will rather have a lesser impact on the assessment of similarity between the sigs since it refers to a non-distinctive element which will be perceived as a top level domain name for Bulgaria. Consequently, the earlier mark ‘ePay.bg’ and the contested sign ‘wepay’ also display evident similarities.

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 marks are 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 by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 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 to an average degree.

The contested sign applied for the following goods and services:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; fire-extinguishing apparatus; none of the above for use in pharmacies or for pharmaceutical products; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media.

Class 35: Advertising; Business management; Business administration; Office functions; Promoting the goods and services of others by hosting micro websites for businesses; Business management relating to business optimization.

Class 38: Telecommunications.

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; Providing temporary use of nondownloadable computer programs; Providing temporary use of non-downloadable business software; Providing temporary use of non-downloadable software applications accessible via a website; Providing temporary use of non-downloadable software for importing and managing data; Website hosting services; Providing an online website for creating and hosting micro websites for businesses; Computer services; Computer programming.

As explained above, the earlier trade marks enjoy a reputation for the following services in Class 36:

Electronic payment services.

The contested apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; other digital recording media in Class 9 refer to various apparatus and instruments which may be used for transmitting payment orders. The opponent’s electronic payment services refer to services provided by finance businesses. Among these organisations are, inter alia, banks, credit card companies, insurance companies, consumer finance companies, stock brokerages and investment funds.

Since the 1990s, the boundary between the services such as the ones in the present case, the opponent’s e-payment services and IT apparatus and instruments has become blurred as a result of the growth of the internet and its increasing role in the online transfer of financial data. Equipment used for financial services purposes, like apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; other digital recording media are nowadays indispensable to perform financial operations, in particular in the age of development of speech and image recognition apparatus used in the banking sector, for example for telephone banking customers (speech recognition).

Regarding the applicant’s services referring to the telecommunication sector in Class 38, it is important to mention that nowadays financial institutions deliver the highest levels of financial PR professionals facilitating a transfer of financial data regarding payment/investment transactions and assisting clients with communication consultancy for their financial operations.

Likewise, the contested services in Class 42 include mainly services provided by persons, individually or collectively, in relation to the theoretical and practical aspects of complex fields of activities; such services are provided by members of professions such as engineers, computer programmers, etc. The reality of the market shows that the abovementioned IT solutions are very welcome in the financial field and many IT companies compete in delivering IT solutions and finding new ways to make spending, managing, and investing money easier and safer than ever. It should be noted that the security of e-payments is one of the most challenging issue bothering IT researchers/experts.

Although, no direct connection can be established between the above-mentioned goods and services, an association with the earlier marks remains possible bearing in mind the reasons mentioned above, especially when taking into account the degree of similarity between the signs and the reputation of the earlier marks. Therefore, it is likely that the contested sign will bring the earlier marks into the mind of the relevant consumers when encountering the above mentioned contested goods in Class 9 and the contested services in Classes 38 and 42.

Furthermore, it should be noticed that the relevant public consists of consumers, namely the general public and the professionals, who are likely to use both, the services covered by the earlier marks and the goods and services covered by the contested sign.

However, in case of the remaining applicant’s goods in Class 9, namely scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; fire-extinguishing apparatus; none of the above for use in pharmacies or for pharmaceutical products; compact discs, DVDs and all the services in Class 35, the Opposition Division is of the opinion that while it is possible that these goods and services may be directed at the same relevant public, they are so different that the contested sign is unlikely to bring the earlier mark to the mind of the relevant public in relation to them. The nature of these goods and services and their purpose are very distinct. The purpose of electronic payment services is to assist clients in facilitating of payment transactions whereas the purpose of the remaining contested goods and services in question is on the one hand to perform different activities depending on the device in question (conducting scientific, nautical, photographic activities etc.) and in case of the services in Class 35 to support or help other businesses to do or improve business activities. Daily applications of the goods and services at issue are fundamentally different.

In this regard the Court has stressed that one factor when considering a link must be ‘the nature of the goods or services for which the conflicting marks were registered, including, inter alia, the degree of dissimilarity between those goods or services’ (‘Intel’, paragraph 42).

Therefore, 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 in relation to the above mentioned goods in Class 9 and the services in Class 35, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected as far as some of the contested goods in Class 9 and all the services in Class 35 are concerned.

Consequently, the Opposition Division will now analyse whether there is a risk of injury under Article 8(5) EUTMR taking into account the applicant’s apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; other digital recording media in Class 9 and all the services in Classes 38 and 42

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.

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

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; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the allegation that the contested sign will free-ride on the coat-tails of the trade mark, which has a reputation so that the services and goods under the contested sign will be marketed far easier since an association between the reputable mark and the later sign will arise in the mind of the consumer. Indeed, the opponent argues that even if no confusion can occur, such an association will definitely facilitate the marketing of the applicant’s goods and services because the consumer having in mind the reputation of the earlier marks might be tempted to try offers of the opponent’s competitors.

In view of the link with the earlier reputed marks and the association that it will produce in the minds of consumers in the relevant territory, the contested sign will receive an unfair ‘boost’, because the marketing of the applicant’s goods and services would be made easier, as they will benefit from the repute of the earlier trade marks. Due to the reputation of the earlier marks and the aforementioned similarities between the signs, the Opposition Division is of the view that the use of the applicant’s mark applied for could encourage the public to buy the contested goods and services by reason of the association they would be likely to make with the earlier marks and the commercial value attached to their repute and their distinctive character.

Consequently, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade marks.

Other types of injury

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

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 distinctive character or repute of the earlier trade marks. It follows that there is no need to examine whether other types also apply.

5. Conclusion

Considering all the above, the opposition is partially well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; other digital recording media in Class 9 and all the services in Classes 38 and 42.

The Opposition Division will now analyse the opposition under the ground 8(1)(b) EUTMR with respect to the goods and services for which a link between the signs above was not established.

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 services on which the opposition is based are the following:

Class 36: Electronic payments services.

The remaining contested goods and services are the following:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; fire-extinguishing apparatus; none of the above for use in pharmacies or for pharmaceutical products; compact discs, DVDs.

Class 35: Advertising; business management; business administration; office functions; promoting the goods and services of others by hosting micro websites for businesses; business management relating to business optimization.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from 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 9

The remaining contested goods in this Class have nothing in common with the opponent’s electronic payments services in Class 36. This is not just a case of goods on the one hand and the services on the other. They belong to different market sectors and require different qualifications and know-how for their application. The relevant public will not be the same and the goods and services in questions are neither complementary nor in competition. Therefore, they are dissimilar.

Contested services in Class 35

The contested services in Class 35 are not related to the financial sector but to business management, advertising and promotion and as such they are offered by different companies, target different clients and fulfil different needs. They are neither in competition nor complementary to each other. Their distribution channels, suppliers and customers are also different. Consequently, they are dissimilar.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier trade marks were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods and services cannot be overcome by the highly distinctive character of the earlier trade marks, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

For the sake of completeness, it should be added that the opponent failed to prove the existence of family of marks in the present case. In the observations filed with the Office within the substantiation period the opponent claimed that two other trade marks, which are not the ones on which the opposition is based, namely ‘ePay GSM’ and ‘ePay Voice’ together with the earlier marks in question form the family of marks because they contain the same ‘ePay’ element.

In this regard the Opposition Division refers to the judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 123-127, confirmed by judgment of 13/09/2007, C-234/06 P, Bainbridge, EU:C:2007:514, § 63 which states that when an opposition to an EUTM application is based on several earlier marks and those marks display characteristics that give grounds for regarding them as forming part of a single ‘series’ or ‘family’, a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. The Courts have given clear indications on the two cumulative conditions that have to be satisfied:

Firstly, the proprietor of a series of earlier marks must submit proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’ (i.e. at least three).

Secondly, the trade mark applied for must not only be similar to the marks belonging to the series, but must also display characteristics capable of associating it with the series. Association must lead the public to believe that the contested trade mark is also part of the series, that is to say, that the goods and services could originate from the same or connected undertakings. This may not be the case where, for example, the element common to the earlier series of marks is used in the contested trade mark, either in a different position from that in which it usually appears in the marks belonging to the series, or with a different semantic content.

The above mentioned trade marks: ‘ePay GSM’ and ‘ePay Voice’ do not constitute the basis for the present opposition and the proof of use cannot be analysed in relation to these trade marks. Consequently, this claim of the opponent must be set aside.

Considering all the above, the opposition is not well founded under Article 8(1)(b)EUTMR.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some 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

Gueorgui IVANOV

Monika CISZEWSKA

Manuela RUSEVA

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.