OPPOSITION No B 2 764 929

Coin Furniture Limited, First Floor, Pavilion E 118 Southwark Street, London SE1 0SW, United Kingdom (opponent), represented by Fieldfisher LLP, Riverbank House 2 Swan Lane, London EC4R 3TT, United Kingdom (professional representative)

a g a i n s t

Diawell GmbH, Rosa-Luxemburg-Ring 57, 34253 Lohfelden, Germany (applicant), represented by Bode Meitinger Patentanwalts GmbH, Hermann-Schmid-Straße 10, 80336 München, Germany (professional representative).

On 07/03/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 764 929 is upheld for all the contested services.

2. European Union trade mark application No 15 362 007 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS:

The opponents filed an opposition against all the services (in Class 35) of European Union trade mark application No 15 362 007 (word mark:
“Diawell”). The opposition is based on, inter alia, European Union trade mark registration No 9 534 711 (word mark: “DWELL”). The opponent invoked Article 8(1)(b) and 8(5) EUTMR mark and Article 8(4) EUTMR for the same non-registered sign in the territory of the United Kingdom.

REPUTATION – ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier European Union trade mark registration No 9 534 711, for which the opponent claimed repute in the European Union.

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

• The signs must be either identical or similar.

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

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

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T 345/08, & T 357/08, Botolist / Botocyl, EU:T:2010:529, § 41).

However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

a) Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union. 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 20/04/2016. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:

Class 18: Leather and imitations of leather, and goods made of these materials, not included in other classes; animal skins, hides; trunks and travelling bags; purses; wallets; umbrellas, parasols and walking sticks; briefcases; handbags; shopping bags; suitcases; vanity cases, not fitted; leather trimmings for furniture; parts and fittings for all the aforesaid goods.

Class 20: Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics; mattresses; stools; chairs; ornaments made of wood, wax, plaster or plastic; cushions; wine racks; trays and bins; magazine racks; wine cases; tables; storage boxes; bathroom furniture and bathroom cabinets; shelves; storage units; hooks; curtain rings, tracks and poles; baskets; window boxes made of plastic and wood; umbrella stands; sofas; beds; armchairs; chests of drawers; sideboards; plate racks; bins, not of metal; shelving units; coat stands; clothes hangers; clothes hooks; curtain hooks; curtain tie-backs; baskets, not of metal; picnic baskets (not fitted); wicker baskets; parts and fittings for all the aforesaid goods.

Class 21: Household and kitchen utensils and containers; brushes (except paint brushes); unworked or semi-worked glass (except glass used in building); glassware, porcelain, earthenware, pottery and china not included in other classes; waste paper baskets; crockery; coasters (tableware); lunch boxes; cooler boxes; picnic baskets (fitted); combs and sponges; biscuit tins; bread bins; wine stoppers; cork screws; ice buckets; cocktail shakers; salt and pepper mills; spice racks; bottle openers; kitchen and barbecue utensils; cookware; mugs; kettles, teapots and cafetieres; towel rails; toilet brushes; laundry bins; fruit juicers; graters; fruit bowls; beakers; toothbrushes; toothbrush holders; soap dishes; light pulls; chopping boards; flasks; oven gloves; vases; candlesticks; bread baskets; bread boards; baskets for domestic use; storage baskets for household use; cups; eggcups; butter dishes; drinking glasses; towel rings; toilet utensils; toilet roll holders; laundry baskets; trays for household purposes; bins for household refuse; parts and fittings for all the aforesaid goods.

Class 27: Carpets, rugs, mats and matting; linoleum and other materials for covering floors; wall hangings (non-textile); wallpaper; bath mats; door mats.

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; ornaments and decorations for Christmas trees; toys; plush toys; electronic activity toys; toys made of metal, wood and plastic; children's toys; trampolines; toys and playthings for infants and children; plush and soft sculpture toys, children's multiple activity toys, electronic teaching games, board games, action skill games, handheld toys, toy scooters and skateboards, play jewellery and makeup, children's play houses, toy telephones, toy vehicles, puzzles, dress-up kits, musical toys.

Class 35: Advertising; retail services connected with furniture, furnishings, household articles, leather goods, bags, carpets, rugs, mats, matting, games and playthings; retail services connected with furniture, furnishings, household articles, leather goods, bags, carpets, rugs, mats, matting, games and playthings provided via a mail order catalogue, or from a website specialising in the sale of furniture, furnishings, household articles, leather goods, bags, carpets, rugs, mats, matting, games and playthings; information, advisory and consultancy services relating to all of the aforesaid.

The opposition is directed against the following services in Class 35:

Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to dyes, colorants, pigments and inks, accessories for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to body care preparations, animal care preparations, cleaning and fragrancing preparations, abrasive preparations, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to dietetic preparations and dietary supplements, dental preparations and articles, sanitary preparations and articles, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to pest control preparations and articles, medical and veterinary preparations and articles, mechanical equipment for use in agriculture, earthworks and building, oil and gas extraction and mining, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to pumps, compressors and ventilators, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to robots, including robot vacuum cleaners and automatic lawnmowers, moving and transport apparatus, electric generators, machines and machine tools for treatment of materials and manufacture, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to motors and engines, drives and general machine parts, dispensing machines, sweeping, cleaning and washing machines, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to hygienic and beauty care implements for humans and animals, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to sharp and blunt weapons, utensils for preparing foodstuffs, kitchen knives and cutlery, hand tools and implements (hand-operated) for treatment of materials and for building, repair and maintenance work, tools for lifting, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to recorded data, IT and audiovisual apparatus, magnets, magnetising and demagnetising devices, apparatus for treatment using electricity, apparatus, instruments and cables for electricity, optical apparatus and equipment, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to amplifiers and correctors, security, safety, protective and signalling apparatus and equipment, diving equipment, navigation, orientation, tracking, target tracking and mapping apparatus, including fish tracking apparatus, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to measuring, detecting and monitoring instruments and devices and regulators, including scales and food analysers, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to anemometers, baby intercoms and baby monitoring apparatus, weather stations, thermometers, not for medical use, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to apparatus for scientific research and laboratories, teaching apparatus and simulators, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to application programs (apps) (downloadable), computer and games programs, computer software, application software (apps) (recorded and downloadable) for computers, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to application software (apps) (recorded and downloadable) for notebook computers, application software (apps) (recorded and downloadable) for laptops, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to application software (apps) (recorded and downloadable) for tablet computers, application software (apps) (recorded and downloadable) for smartphones and mobile terminals, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to sensors and detectors (including emotion trackers, vital sensors, sleep and light sensors), exercise monitors (in particular fitness and exercise bracelets, GPS and heart rate monitors), parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to surveillance apparatus, equipment and instruments (in particular sleep trackers, GPS trackers, surveillance cameras, movement sensors), parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to door bells, apparatus for scientific research and laboratories, teaching apparatus and simulators, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to smartphones and smartwatches, computer software and hardware, physiotherapy apparatus, hearing protectors, feeding aids and pacifiers for babies, sexual aids (including vibrators), parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to medical and veterinary apparatus and instruments (in particular apparatus for recording, monitoring, measuring and testing for diabetes, blood sugar, blood pressure and pulse rate, muscle stimulators, clinical thermometers), parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to apparatus and instruments for determining fertility, ultrasound apparatus, medical furniture and bedding, equipment for moving patients, medical clothing, prostheses and artificial implants, orthopaedic aids, mobility aids, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to massage apparatus, posture trackers, vents and installations for removing exhaust gases, tanning apparatus, sanitary installations and facilities, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to water supply equipment, burners, boilers and heating apparatus, lighting and light reflectors, cooking, heating, refrigerating and other apparatus and equipment for treatment of foodstuffs and beverages, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to chemical processing installations, industrial installations for filtering of liquids, installations for collecting gases, installations for collecting liquids, installations for separating impurities from molten metals, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to bioreactors for clarifying industrial wastewater, apparatus for draining food waste, personal heating and drying apparatus, drying installations, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to refrigerating and freezing equipment, regulating and safety accessories for water and gas installations, nuclear installations, apparatus and installations for heating, ventilating, air conditioning and air purification, lighters, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to vehicles and apparatus for locomotion, in particular prams (baby carriages), parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to precious stones, pearls and precious metals and imitations thereof, jewellery, chronometric instruments (including sleep phase alarm clocks and dawn simulation alarm clocks, smartwatches), parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to other goods of precious metal and precious stones and imitations thereof, namely statues and figurines, ornaments, coins and tokens, works of art of precious metal, key rings (trinkets or fobs), jewellery and watch boxes, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to musical instruments, music accessories, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to works of art and figurines of paper or cardboard, and architectural models, decorations and artists' requisites, stationery and instructional and teaching material, disposable paper articles, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to stationery and instructional and teaching material, natural and artificial sausage casings, umbrellas and parasols, walking sticks, luggage, bags, pocket wallets and other carrying cases, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to leather and imitations of leather, animal skins, hides, and goods made of these materials (namely boxes, cases, belts), whips, harness and saddlery, animal clothing, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to building materials and building components (non-metallic), doors, gates, windows and window coverings, not of metal, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to buildings and transportable buildings, not of metal, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to unprocessed and semi-processed materials (namely pitch, tar, bitumen and asphalt, stone, rock, clay and minerals, wood and imitations of wood), not adapted for any specific purpose, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to statues and works of art, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to goods, not of metal, namely mooring buoys, locks and keys, door, gate and window fittings, valves, fastening materials, bobbins, clamps, connecting and coupling parts, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to fans, clack valves, grab handles and rails, joints, hooks and holders, identity bracelets, moulds and shapers, flag holders, dowels, protectors and support equipment, spools, stiffening materials, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to rings, poles, saw benches, sink mats, spacer rings, intermediate layers for bath tubs, fittings for staircases, box springs, stackable adapters, staves, posts and masts, suction cups, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to overhead rail systems, trailers, tension rollers, tent parts, holders for paper towels, trays, statues, figurines, works of art and ornaments and decorations, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to furniture and furnishings, housing and beds for animals, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to unprocessed and semi-processed materials (namely yellow amber, animal parts, meerschaum, plant parts), not adapted for any specific purpose, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to containers and closures and holders therefor, ladders and portable steps, displays, stands and signage, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to statues, figurines, signs and works of art, unworked and semi-worked glassware, not being for any specific use, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to gardening items, brushes, paintbrushes and brooms and brush-making materials, including toothbrushes, dishes, cookery pots and containers, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to drinks bottles, cleaning apparatus and articles for cleaning purposes, cosmetics and toiletry utensils and bathroom articles, articles for animal husbandry, namely aquaria and vivaria, devices for pest and vermin control, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to bird baths, cages, animal feeding and drinking articles, including automatic feeders, goldfish bowls, grooming articles, nesting articles, swing tags, waste disposal articles, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to household articles for clothing and footwear, namely boot jacks and shoe horns, button hooks, coatstands, clothing stretchers, irons and wringers, shoe polishing apparatus, shoe trees and stretchers, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to raw fibrous textile materials and substitutes therefor, goods of woven fabrics and fibres (namely slings and tapes), parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to bags and sacks for packaging, storage and transport, tarpaulins, awnings, tents and covers (not fitted), sails, ropes and string, nets, ventilation cloths, container display units, padding and stuffing materials, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to textiles and textile goods, cushions, bed covers, table covers, headgear, clothing, footwear, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to accessories for clothing, sewing articles and decorative textile articles, hair ornaments, hair curlers, hair fasteners and false hair, artificial fruits, flowers and vegetables, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to floor coverings and artificial floor coverings, wall and ceiling cladding, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to accessories for clothing, sewing articles and decorative textile articles, hair ornaments, hair curlers, hair fasteners and false hair, artificial fruits, flowers and vegetables, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to carpets, rugs, mats and matting, linoleum and other coverings for existing floors, wall hangings (non-textile), parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to sporting articles and equipment, including muscle stimulators, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to festive decorations and artificial Christmas trees, fairground and playground apparatus, toys, games and playthings, novelties, including educational games and playthings, including electronic, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to electronic cigarettes, smokers' articles, in particular electronic-based smokers' articles; Advertising; Marketing services; Commercial promotions; Business management; Business administration; Office functions; Updating of advertising information on a computer data base; Updating of advertising material; Preparing audio-visual presentations for use in advertising; Preparation of publicity documents; Advertising, marketing and promotional consultancy, advisory and assistance services; Brand evaluation services; Electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; Loyalty, incentive and bonus program services; Services to determine the audience affected by advertisements; Direct marketing; Issuing and updating of advertising texts; Search engine marketing services; Web site traffic optimisation; Search engine optimisation; Arranging of product launches; Production of advertising matter and commercials; Product demonstrations and product display services; Response advertising; Collection of information in relation to advertising of goods in the fields of lifestyle, health, games, sports and fitness, house and garden, security, pets, children and family; Sponsorship search; Arranging of presentations for advertising purposes; Prize draws (Organising of -) for promotional purposes; Arranging of competitions for advertising purposes; Production of advertising material; Distribution of advertising, marketing and promotional material; Production of video recordings for advertising purposes; Preparation and implementation of media advertising plans and concepts for others; Compilation of advertisements for use as web pages on the Internet; Providing of advertising space, advertising time and advertising media; Compilation, production and dissemination of advertising matter; Preparation of mailing lists for direct mail advertising (other than for sale); Mediation and conclusion of commercial transactions for others; Procurement for others (purchasing of goods and services for other businesses); Auctioneering services; Rental of automatic vending machines, brokerage, organising business contacts, collective buying, commercial evaluation, preparation of competitions, agency business, import and export agencies, negotiation and brokerage, ordering, price comparison, procurement services, for others, subscription services; Business assistance, management and administrative services; Business analysis, research and information services; Leasing and rental in relation to the aforesaid services, included in this class; Consultancy and information in relation to the aforesaid services, included in this class.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The terms ‘in particular’ and ‘including’, used in the applicant’s list of services, indicate that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of services to show the relationship of individual services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

The opponent submitted evidence to support this claim. As the opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists, in particular, of the following documents:

Witness Statement of Aamir Ahmad, the opponent’s Chief Executive Officer, dated 26/03/2017, with the following various annexes and other information:

• mentions of the opponent in the press in The Times, Daily Telegraph and BBC News in 2013 (AA 1);

• photographs of the Dwell-Stores, undated (AA 2) and dated 27/10/2006 (AA 3);

• extracts from http://www.dwell.co.uk/ indicating that the opponent has sold furniture and home accessories to the public for the last 14 years (AA 4);

• Dwell catalogue, dated 2007, showing different items of furniture (AA 5);

• agreement between the opponent and another company, in order to help it (Retail Week articles dated 21/02/2014 (AA 6), 20/08/2014 (AA 7) and 09/12/2016 (AA 8);

• some invoices issued to international customers; the products they describe are furniture items (AA 9);

• the turnover of the DWELL business between 2007 and 2017 in the United Kingdom showing an amount of a couple of million pounds sterling relating to furniture and Dwell Retail’s sales of furniture and home furnishings; in the abovementioned Witness Statement, it is also mentioned that Dwell Retail expects to spend several millions of pounds sterling on marketing, in particular in the 12 months up to July 2017 (AA 10);

• examples of some of the opponent’s advertisements (up to December 2012; AA 11) and other examples of advertisements (AA 12);

• examples of press and media of the opponent (AA 14);

• an award made to the opponent in 2012 for Best Storage at House (AA 15).

As far as the affidavit is 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 use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) 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.

Most of the documents submitted, on the basis of documents such as press articles, photographs, excerpts from the opponent’s homepage or catalogues, do not in themselves provide evidence of a genuine and concrete use of the earlier mark for the marketing of the goods and services in question. However, they show increased use of the mark, as can be determined from the opponent’s turnover over the past 10 years, which has increased approximately two-fold and is measured in millions of pounds sterling, and from the related non-negligible advertising expenses, which also relate to the earlier mark in the United Kingdom. The opponent also argues that 604 000 customers have bought the opponent’s goods at least once, which amounts to 1% of the entire UK population. This is also confirmed by the number of documents submitted and the variety of uses of the earlier mark (e.g. awards and working with well-known designers). These examples, which are not only of the use of the trade mark but also of the impact on the relevant market, support the overall impression of a high market presence.

This information, all in all, shows a reputation for the following goods and services:

Class 20: Furniture, parts and fittings for all these goods.

Class 35: Retail services connected with furniture, furnishings.

Having examined the material listed above, the Opposition Division concludes that the earlier trade mark has a reputation in the United Kingdom for these goods and services. This does not apply for the other goods and services, because none of the material refers to the abovementioned goods and services.

It is clear from the evidence that the earlier trade mark has been subject to long-standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by diverse sources. The turnover, including advertising and the other material shown by the evidence, and the various references in the press to its success all unequivocally show that the mark enjoys a high degree of recognition among the relevant public.

The abovementioned evidence indicates that the earlier trade mark has been used in relation to furniture, parts and fittings for all these goods; retail services connected with furniture, furnishings for a substantial period of time; this has been confirmed by the samples of publications in English and the other abovementioned documents, which also make reference to the sign and to these goods and services. The trade mark has a consolidated position in the market.

Furthermore, although the relevant documents emanate from the opponent itself, the content of these documents is also supported by other relevant pieces of evidence (press articles, samples of advertisements and extracts of trade balance sheets). In addition, it is clear to the Opposition Division that the opponent has made substantial, intensive and long-standing use of its mark, and that it has invested substantial amounts in promoting the trade mark by way of advertising of its goods and services, so that a significant part of the relevant public in the United Kingdom knows and recognises the opponent’s mark.

The evidence only relates to the abovementioned goods and services in Classes 20 and 35.

b) The signs

DWELL	Diawell
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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, which are protected in all different typefaces.

The contested sign has no meaning for the relevant public and is, therefore, distinctive.

The earlier sign will be associated with “live in or at a specified place” (Oxford Dictionary). Bearing in mind that the relevant goods and services are furniture-related, this element is weak for these goods and services as it relates to their use.

Visually and aurally, the earlier trade mark is completely included in the contested sign. The signs have the same beginning, ‘D’, and ending, ‘well’. The only difference is in the second and third letters of the contested sign, namely ‘ia’. Therefore, they have similar rhythms, sounds and pronunciations, which lead to an (above) average degree of visual and aural similarity, even taking account of the weakness of the earlier trade mark.

Conceptually, since the earlier trade mark has a meaning and the contested sign does not, the signs are conceptually not similar.

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.

c) The ‘link’ between the signs

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

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

 the degree of similarity between the signs;

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

 the strength of the earlier mark’s reputation;

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

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

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

In the present case, the signs are visually and aurally similar to an (above) average degree and conceptually not similar.

The contested services in Class 35 Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to dyes, colorants, pigments and inks, accessories for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to body care preparations, animal care preparations, cleaning and fragrancing preparations, abrasive preparations, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to dietetic preparations and dietary supplements, dental preparations and articles, sanitary preparations and articles, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to pest control preparations and articles, medical and veterinary preparations and articles, mechanical equipment for use in agriculture, earthworks and building, oil and gas extraction and mining, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to pumps, compressors and ventilators, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to robots, including robot vacuum cleaners and automatic lawnmowers, moving and transport apparatus, electric generators, machines and machine tools for treatment of materials and manufacture, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to motors and engines, drives and general machine parts, dispensing machines, sweeping, cleaning and washing machines, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to hygienic and beauty care implements for humans and animals, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to sharp and blunt weapons, utensils for preparing foodstuffs, kitchen knives and cutlery, hand tools and implements (hand-operated) for treatment of materials and for building, repair and maintenance work, tools for lifting, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to recorded data, IT and audiovisual apparatus, magnets, magnetising and demagnetising devices, apparatus for treatment using electricity, apparatus, instruments and cables for electricity, optical apparatus and equipment, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to amplifiers and correctors, security, safety, protective and signalling apparatus and equipment, diving equipment, navigation, orientation, tracking, target tracking and mapping apparatus, including fish tracking apparatus, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to measuring, detecting and monitoring instruments and devices and regulators, including scales and food analysers, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to anemometers, baby intercoms and baby monitoring apparatus, weather stations, thermometers, not for medical use, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to apparatus for scientific research and laboratories, teaching apparatus and simulators, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to application programs (apps) (downloadable), computer and games programs, computer software, application software (apps) (recorded and downloadable) for computers, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to application software (apps) (recorded and downloadable) for notebook computers, application software (apps) (recorded and downloadable) for laptops, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to application software (apps) (recorded and downloadable) for tablet computers, application software (apps) (recorded and downloadable) for smartphones and mobile terminals, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to sensors and detectors (including emotion trackers, vital sensors, sleep and light sensors), exercise monitors (in particular fitness and exercise bracelets, GPS and heart rate monitors), parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to surveillance apparatus, equipment and instruments (in particular sleep trackers, GPS trackers, surveillance cameras, movement sensors), parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to door bells, apparatus for scientific research and laboratories, teaching apparatus and simulators, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to smartphones and smartwatches, computer software and hardware, physiotherapy apparatus, hearing protectors, feeding aids and pacifiers for babies, sexual aids (including vibrators), parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to medical and veterinary apparatus and instruments (in particular apparatus for recording, monitoring, measuring and testing for diabetes, blood sugar, blood pressure and pulse rate, muscle stimulators, clinical thermometers), parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to apparatus and instruments for determining fertility, ultrasound apparatus, medical furniture and bedding, equipment for moving patients, medical clothing, prostheses and artificial implants, orthopaedic aids, mobility aids, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to massage apparatus, posture trackers, vents and installations for removing exhaust gases, tanning apparatus, sanitary installations and facilities, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to water supply equipment, burners, boilers and heating apparatus, lighting and light reflectors, cooking, heating, refrigerating and other apparatus and equipment for treatment of foodstuffs and beverages, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to chemical processing installations, industrial installations for filtering of liquids, installations for collecting gases, installations for collecting liquids, installations for separating impurities from molten metals, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to bioreactors for clarifying industrial wastewater, apparatus for draining food waste, personal heating and drying apparatus, drying installations, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to refrigerating and freezing equipment, regulating and safety accessories for water and gas installations, nuclear installations, apparatus and installations for heating, ventilating, air conditioning and air purification, lighters, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to vehicles and apparatus for locomotion, in particular prams (baby carriages), parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to precious stones, pearls and precious metals and imitations thereof, jewellery, chronometric instruments (including sleep phase alarm clocks and dawn simulation alarm clocks, smartwatches), parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to other goods of precious metal and precious stones and imitations thereof, namely statues and figurines, ornaments, coins and tokens, works of art of precious metal, key rings (trinkets or fobs), jewellery and watch boxes, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to musical instruments, music accessories, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to works of art and figurines of paper or cardboard, and architectural models, decorations and artists' requisites, stationery and instructional and teaching material, disposable paper articles, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to stationery and instructional and teaching material, natural and artificial sausage casings, umbrellas and parasols, walking sticks, luggage, bags, pocket wallets and other carrying cases, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to leather and imitations of leather, animal skins, hides, and goods made of these materials (namely boxes, cases, belts), whips, harness and saddlery, animal clothing, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to building materials and building components (non-metallic), doors, gates, windows and window coverings, not of metal, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to buildings and transportable buildings, not of metal, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to unprocessed and semi-processed materials (namely pitch, tar, bitumen and asphalt, stone, rock, clay and minerals, wood and imitations of wood), not adapted for any specific purpose, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to statues and works of art, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to goods, not of metal, namely mooring buoys, locks and keys, door, gate and window fittings, valves, fastening materials, bobbins, clamps, connecting and coupling parts, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to fans, clack valves, grab handles and rails, joints, hooks and holders, identity bracelets, moulds and shapers, flag holders, dowels, protectors and support equipment, spools, stiffening materials, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to rings, poles, saw benches, sink mats, spacer rings, intermediate layers for bath tubs, fittings for staircases, box springs, stackable adapters, staves, posts and masts, suction cups, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to overhead rail systems, trailers, tension rollers, tent parts, holders for paper towels, trays, statues, figurines, works of art and ornaments and decorations, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to furniture and furnishings, housing and beds for animals, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to unprocessed and semi-processed materials (namely yellow amber, animal parts, meerschaum, plant parts), not adapted for any specific purpose, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to containers and closures and holders therefor, ladders and portable steps, displays, stands and signage, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to statues, figurines, signs and works of art, unworked and semi-worked glassware, not being for any specific use, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to gardening items, brushes, paintbrushes and brooms and brush-making materials, including toothbrushes, dishes, cookery pots and containers, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to drinks bottles, cleaning apparatus and articles for cleaning purposes, cosmetics and toiletry utensils and bathroom articles, articles for animal husbandry, namely aquaria and vivaria, devices for pest and vermin control, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to bird baths, cages, animal feeding and drinking articles, including automatic feeders, goldfish bowls, grooming articles, nesting articles, swing tags, waste disposal articles, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to household articles for clothing and footwear, namely boot jacks and shoe horns, button hooks, coatstands, clothing stretchers, irons and wringers, shoe polishing apparatus, shoe trees and stretchers, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to raw fibrous textile materials and substitutes therefor, goods of woven fabrics and fibres (namely slings and tapes), parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to bags and sacks for packaging, storage and transport, tarpaulins, awnings, tents and covers (not fitted), sails, ropes and string, nets, ventilation cloths, container display units, padding and stuffing materials, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to textiles and textile goods, cushions, bed covers, table covers, headgear, clothing, footwear, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to accessories for clothing, sewing articles and decorative textile articles, hair ornaments, hair curlers, hair fasteners and false hair, artificial fruits, flowers and vegetables, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to floor coverings and artificial floor coverings, wall and ceiling cladding, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to accessories for clothing, sewing articles and decorative textile articles, hair ornaments, hair curlers, hair fasteners and false hair, artificial fruits, flowers and vegetables, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to carpets, rugs, mats and matting, linoleum and other coverings for existing floors, wall hangings (non-textile), parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to sporting articles and equipment, including muscle stimulators, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to festive decorations and artificial Christmas trees, fairground and playground apparatus, toys, games and playthings, novelties, including educational games and playthings, including electronic, parts and fittings for all of the aforesaid goods; Trading and consumer information, namely retailing and wholesaling, in particular in the context of e-commerce and via a shopping platform, in relation to electronic cigarettes, smokers' articles, in particular electronic-based smokers' articles; Consultancy and information in relation to the aforesaid services, included in this class are different retailing and wholesaling for various goods.

There is not only a link between the signs but also a degree of similarity because all these services can be classified as retailing/wholesaling. The services at issue have the same nature, since both are retail services and have same purpose of allowing consumers to conveniently satisfy different shopping needs and the same method of use.

The additional contested Advertising; Marketing services; Commercial promotions; Updating of advertising information on a computer data base; Updating of advertising material; Preparing audio-visual presentations for use in advertising; Preparation of publicity documents; Advertising, marketing and promotional consultancy, advisory and assistance services; Electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; Services to determine the audience affected by advertisements; Direct marketing; Issuing and updating of advertising texts; Search engine marketing services; Production of advertising matter and commercials; Product demonstrations and product display services; Response advertising; Collection of information in relation to advertising of goods in the fields of lifestyle, health, games, sports and fitness, house and garden, security, pets, children and family; Arranging of presentations for advertising purposes; Prize draws (Organising of -) for promotional purposes; Arranging of competitions for advertising purposes; Production of advertising material; Distribution of advertising, marketing and promotional material; Production of video recordings for advertising purposes; Preparation and implementation of media advertising plans and concepts for others; Compilation of advertisements for use as web pages on the Internet; Providing of advertising space, advertising time and advertising media; Compilation, production and dissemination of advertising matter; Preparation of mailing lists for direct mail advertising (other than for sale); Consultancy and information in relation to the aforesaid services, included in this class provide the necessary publicity and are various types of advertising that may relate to the goods and services of the earlier mark, therefore there is also a close link in that respect.

The remaining contested Business management; Business administration; Office functions; Brand evaluation services; Loyalty, incentive and bonus program services; Web site traffic optimisation; Search engine optimisation; Arranging of product launches; Sponsorship search; Mediation and conclusion of commercial transactions for others; Procurement for others (purchasing of goods and services for other businesses); Auctioneering services; Rental of automatic vending machines, brokerage, organising business contacts, collective buying, commercial evaluation, preparation of competitions, agency business, import and export agencies, negotiation and brokerage, ordering, price comparison, procurement services, for others, subscription services; Business assistance, management and administrative services; Business analysis, research and information services; Leasing and rental in relation to the aforesaid services, included in this class; Consultancy and information in relation to the aforesaid services, included in this class take care of the necessary business and/or administrative conditions to maintain the business, to secure it or to be the subject of the same. These include management tasks as well as administrative tasks; business transactions that may also relate to the marketing of the goods; the search for sponsors to realise the business concept; the customer-friendly creation or optimisation of websites; rental services, even if they arise from other business areas; maintaining business relationships; importing and exporting goods as an essential task to maintain or expand the business base; procurement services to preserve the substance of the business and to be able to offer the latest trends in the field of furniture; and the implementation of price comparisons in the relevant market to observe the principle of economic action. This also includes information and advice to maintain the existing customer base or to gain new customers. In this respect, therefore, at least one link is given for the reasons set out.

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 (judgment of 26/09/2012, T 301/09, ‘CITIGATE’, § 96). It overcomes the weakness of the earlier mark because of the close similarity between the signs and the clearly existing link, in part similarity, between the goods and services.

d) 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 there is the potential for the applicant to take unfair advantage of the reputation of the earlier trade mark, since, because of the similarity between the signs and the goods and services at issue, the marketing of the contested mark will be easier. Furthermore, it also claims that the use of the contested trade mark would be detrimental to the reputation of the earlier trade mark (tarnishing and dilution) because, if the contested application is registered, the earlier mark’s ability to identify the goods for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the contested mark leads to ‘dispersion’ of the identity of the earlier mark.

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

e) 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: the use of the contested mark for the services for which registration is sought will take unfair advantage of the reputation of the earlier trade mark.

• The trade mark application clearly tries to link to the reputation of the earlier trade mark.

• The strong reputation and the positive image of the earlier mark makes it possible that consumers will associate the contested trade mark with the famous earlier mark.

• The similarity of the signs makes it possible that the images and expectations of the earlier mark are easily transferred to the contested mark.

In the present case, it has been held that the signs at issue are similar. The Opposition Division considers that the similarity of the marks would create an association in the mind of the relevant public in the situation in which there is a clear link between the contested mark and the earlier reputed trade mark. A new trade mark with the identical abovementioned element would benefit unduly from the established reputation of the opponent’s mark when used for the contested services owing to the pre-existing and reputed trade mark, which is reputed for the abovementioned goods and services in Classes 20 and 35. This may lead to an unacceptable situation in which the applicant is allowed to take a ‘free ride’ on the opponent’s investment in promoting and building up goodwill for its mark, as it may stimulate the success of the applicant’s goods to an extent that is disproportionately high in comparison with the size of its promotional investment.

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, based on their similarities and the relatedness of the goods and related services (see explanations above) at issue, it is foreseeable that, by using the contested trade mark, the applicant may unfairly benefit from the repute and the consistent 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 to introduce its own trade mark without incurring any great risk or the costs of launching a totally unknown trade mark on to the market.

As seen above, the encroachment upon reputation is an essential condition for Article 8(5) EUTMR to apply. Risk of injury may take three different forms. For an opposition to be well founded in this respect, it is sufficient if only one of these forms is found to occur. 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 forms also apply.

Conclusion

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

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

Claudia MARTINI

Peter QUAY

Octavio MONGE GONZALVO

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.