OPPOSITION No B 2 781 493

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

a g a i n s t

Cooltra Motosharing, S.L., Reina Cristina 2, 2-2, 08003, Barcelona, Spain (applicant), represented by Laia Torrents Homs, C. Provenza 286, 2° 1ª, 08008 Barcelona, Spain (professional representative).

On 18/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 781 493 is upheld for all the contested goods and services.

2. European Union trade mark application No 15 478 506 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 478 506 . The opposition is based on, inter alia, European trade mark registration No 5 323 126, . The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

PROOF OF USE AND REPUTATION — ARTICLE 8(5) EUTMR

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European trade mark registration No 5 323 126, .

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 several of the trade marks on which the opposition is based, including, in particular, European trade mark registration No 5 323 126, , which the Opposition Division will analyse first for reasons of economy of procedure.

The date of filing of the contested application is 25/05/2016. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union from 25/05/2011 to 24/05/2016 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 mark for the services on which the opposition is based, namely the following:

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

In addition, according to the opponent, the earlier trade mark has a reputation in the European Union, in Germany, in Spain and in the United Kingdom.

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, as seen above, the contested trade mark was filed on 25/05/2016. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in European Union, in Germany, in Spain and in the United Kingdom prior to that date. The evidence must also show that the reputation was acquired for the services for which the opponent is registered and has claimed reputation, namely those already indicated above.

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.

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

On 28/08/2017, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 02/11/2017 to submit evidence of use of the earlier trade mark. This period was extended until 02/01/2018. On 20/12/2017, namely within the time limit, the opponent submitted evidence of use and the documents filed by the opponent consist mainly of screenshots of Google street view images showing the earlier sign as used on the opponent's numerous rent-a-car agencies in different Member States, for instance in the United Kingdom and in Germany. There are also screenshots of the opponent's website as it stood at different dates within the relevant period which were obtained using the internet archive 'Wayback Machine'. However, on 18/04/2017, the opponent had already filed evidence of use for the sake of proving the earlier mark's repute in Germany, European Union, Spain, United Kingdom in relation to the above services. In this respect, it must be noted that any evidence that has been submitted by the opponent at any time during the proceedings before the expiry of the time limit for providing proof of use, even before the applicant’s request for proof of use, has to be taken automatically into account when assessing proof of use. This evidence filed on 18/04/2017 consists, in particular, of the following documents.

 Witness statement dated 18/04/2017 of Mr A. Newell, a legal advisor and representative of the opponent, along with the following annexes:

Annex AN1: extract carrying the date of 31/01/2017 from the opponent's website at https://www.enterprisealive.co.uk/about-us/global-locations/ which gives information on the opponent’s business showing that Enterprise has over 9,000 locations worldwide, including 895 in Europe (440 in the United Kingdom, 25 in Ireland, 190 in Germany and 110 in Spain).

Annex AN2: press release from Enterprise on its web page https://www.enterpriseholdings.com/en/financialinformation/.html announcing in particular that

… with annual revenues of more than $20.9 billion, Enterprise Holdings and its affiliates own nearly 1.9 million cars and trucks, making us the largest car rental service provider in the world measured by revenue, employees and fleet….

Annex AN3: charts of Enterprise’s growth in terms of worldwide revenue in billions (in 2016 over 20 billion), vehicles (in 2016 over 1.8 million), locations (in 2016 over 9,000), employees (in 2016 over 95,000);

Annex AN4: extract of Forbes magazine rating Enterprise as the 15th largest privately-owned company in the United States as at the end of the 2015 fiscal year.

 Witness statement dated 11/12/2013 of Mr D. Scales, the opponent’s Vice President and Finance Director for the United Kingdom and Ireland. In this statement, Mr Scales points out that the opponent is the largest vehicle rental service provider in the world, measured by its revenue, number of employees and fleet size. He also stresses that Enterprise has always used a lower case ‘e’ in respect of its vehicle hire business and that it is an historical branding, which it carried over into the United Kingdom and more widely throughout Europe, from the USA, where the business began using an ‘e’ logo as far back as the late 1950’s and/or early 1960’s. Examples of the use of the ‘e’ logo are given in the annexes attached to the statement, such as use on vehicle stickers, key rings and other gadgets, street signage, use on vehicle rental comparison websites, on airport shuttle buses, on “direction” signs at airports, use on Facebook, Twitter and other social networks, use on directional signage at airports in the United Kingdom, as an office sign for outlets in the United Kingdom, use in an advertisement from 2008/2009, in publications, including the daily magazine Rental (dated May 2009), in United Kingdom television advertisements, broadcast since the middle of 2012, and use on rental cars themselves. In the statement, Mr. Scales also makes reference to the rapid expansion of the business (vehicle rental) in the United Kingdom increases, year on year, achieving 30,1% of the market share in 2012, and shows a significant company expenditure in advertising between 2010 and 2013 (Yellow pages) and between 2011-2013 (television advertising), in fixed and mobile display (in United Kingdom) advertising, and in ‘Ad Word’, ‘pay per click’ and other on line advertising means between 2008 and 2012 (in the United Kingdom, Ireland and Germany). The many annexes include a company brochure entitled ‘Opportunity. Growth. Success’ (which is not dated) regarding the company history, growth and values, where the logo ‘e’ and the logo ‘e enterprise’ are shown, and reports regarding the number of visitors and the overall performance of the opponent’s website, but no reference is made to the ‘e’ logo.

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

 Witness Statement dated 11/12/2012 of Mr P. Malivoire, an independent market research consultant who was instructed by the opponent to undertake two surveys in the United Kingdom in October 2013 (a pilot survey) – with 101 interviews – and on November 2013 – with another 1.038 interviews – to identify consumers’ reactions to an image showing Enterprise’s trade mark made up of the logo ‘e’ (i.e. ). In the first interview, 38% of the respondents, and in the second interview 36% of the respondents, said that it brought Enterprise to their mind when they were shown the letter ‘e’.

 The opponent's submissions further include documents, more particularly a judgment handed down on 13/01/2015 by the High Court of Justice (England and Wales), acting as a CTM Court (Enterprise Holdings, Inc v Europcar Group United Kingdom Ltd & Anor). This judgment refers to a legal action of Enterprise (the opponent) against Europcar’s use of a lower-case ‘e’ mark in Europe in 2012 and 2013 in relation to rental of vehicles. In this judgment it is stated, inter alia, that the Enterprise ‘e’ logo had acquired a reputation in the United Kingdom. There is also a report dated 13/07/2015 promoted by the United Kingdom government and carried out by the ‘Competition & Market Authority’ entitled ‘Short-term car rental in European Union’ where Enterprise was considered one of “five major pan-European vehicle rental companies who (alongside Avis-Budget, Europcar, Hertz and Sixt) in total represents around two thirds of the United Kingdom and European markets.

The applicant considers that part of the evidence with reference to previous cases should not be taken into account for the sake of the present case as, according to the applicant, the opponent is creating a false and dishonest confusion between the applicant and another company, using materials and evidence of other proceedings between the opponent and this other company. However, apart from the fact that that the Office accepts references to material filed as proof of use in previous proceedings before the Office on condition that the opponent clearly identifies the material referred to and the proceedings in which it was filed, it is not clear to the Office, and the applicant has not provided any explanation in such sense, how the opponent's submissions and the evidence filed would create a false and dishonest confusion between the applicant and another company. In any event, any such material, if there were any, would have no relevance for the purpose of proving use and the repute of the earlier mark. The existence or absence of a relationship between the applicant and any other company is of no concern to the Office and the material filed by the opponent is merely analysed with a view to establishing whether or not the earlier has been used.

Regarding the opponent's references to national judgments, it must be noted that the opponent may avail itself of findings of national offices and courts in parallel proceedings. Although, as the applicant underlines, the Office is not bound by findings of the national offices and courts, such decisions must be taken into account and may influence the Office’s decision and it is important for the Office to have the possibility of considering the kind of evidence that led to the relevant decision at national level. In the present case, it appears that the part of the evidence filed in the present case was also filed in the national proceedings and contributed to the decision at national level. Therefore, although the Office is not bound by the findings in this judgment, they must be taken into account and the applicant's argument must be dismissed.

As far as the different statements are concerned, Article 10(4) EUTMDR (former Rule 22(4) EUTMIR, in force before 01/10/2017) expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all. The 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 declarations are supported by the other items of evidence.

In the present case, even though a significant part of the evidence is made up of the witness statements by interested parties themselves or their employees, there are also declarations from independent parties. Moreover, the content of these documents is supported by other relevant items of evidence originating from third-parties (such as judgments, samples of advertisements and surveys). In addition, they also include examples of use of the mark (i.e. the ‘e’ logo) in commerce, on websites, in advertisements, on airport shuttle buses, on cars and from other publicly available sources.

Although part of the evidence refers to Ireland and to Germany, most of it refers to the United Kingdom. This can be inferred from the language of the documents (‘English’), addresses of the opponent's agencies in the United Kingdom and street view pictures displaying the mark in public areas in the United Kingdom. Therefore, the evidence relates to a significant part of the relevant territory and the Opposition Division considers that the opponent provided sufficient indications concerning the place of use of the earlier trade mark.

Part of the evidence is dated within the relevant period, in particular the statements of independent parties, the Competition & Market Authority report, the national judgment, the Euromonitor report, annex 2 (dated 10/12/2013) to the witness statement of Mr Chernatony, annex 1 (dated 6/11/2013) and some of the pictures the witness statement of Mr Scales.

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, and 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.

Moreover, 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 use of the sign in accordance with its function, of 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.

In the present case, the documents filed provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use as well as the nature of use although it is true that not all the evidence filed by the opponent refers directly to the earlier mark. Indeed, some documents, such as the press release from Enterprise website, part of the witness statements of Mr. de Chernatony and Mr. Scales and the report promoted by the United Kingdom government, make reference to the rapid expansion of the opponent's company business, the company’s expenditure in advertising or to the opponent’s leading position in United Kingdom in the vehicle rental sector, without specifying, however, in relation to which mark this leading position was achieved. Yet, in this regard, it is important to note that, when evaluating the evidence submitted, the Opposition Division has to make an overall assessment of the evidence, and all of the circumstances of the case have to be taken into account. Furthermore, all the materials submitted must be assessed in conjunction with each other. Individual items of evidence may be insufficient by themselves to prove use and reputation of the earlier mark, but may contribute to proving this in combination with other documents and information. In the case at issue, the evidence regarding general information on the expansion, achievements and advertising expenditure of the opponent’s company are filed in conjunction with other documents such as the judgment of the High Court of Justice (England and Wales), confirming the acquired reputation of Enterprise ‘e’ logo in the United Kingdom, the results of the surveys carried out in United Kingdom regarding the ‘e’ and numerous pictures displaying the earlier mark on stickers on vehicles, key rings, street signage, car rental comparison websites, signs at airport car rental booths, signs on airport shuttle buses, signs at airport turn-off ramps, direction signs.

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

The applicant considers that the earlier trade mark has been used in a form that is different from the one registered. Article 18 EUTMR states that use of the mark in a form different from the one registered still constitutes use of the trade mark as long as the differing elements do not alter the distinctive character of the trade mark, and regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor.

The purpose of this provision is to allow its proprietor to make variations in the sign which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (judgment of 23/02/2006, T-194/03, EU:T:2006:65, § 50).

With regard to additions, it must be noted that several signs may be used simultaneously without altering the distinctive character of the registered sign (judgment of 08/12/2005, T-29/04, Cristal Castellblanch, EU:T:2005:438, § 34);

Indeed, it is quite common in some market areas for goods and services to bear not only their individual mark, but also the mark of the business or product group (‘house mark’). In these cases, the registered mark is not used in a different form, but the two independent marks are validly used at the same time.

There is no legal precept in the European Union trade mark system that obliges the opponent to provide evidence of the earlier mark alone when genuine use is required within the meaning of Article 47 EUTMR. Two or more trade marks may be used together in an autonomous way, or with the company name, without altering the distinctive character of the earlier registered trade mark (T-463/12, MB, EU:T:2014:935, § 43). It is common practice in the trade to depict independent marks in different sizes and typeface, so these clear differences, which emphasise the house mark, indicate that two different marks are used jointly but autonomously (decision of 07/08/2014, R 1880/2013-1, HEALTHPRESSO/PRESSO, § 42).

The Court has confirmed that the condition of genuine use of a registered trade mark may be satisfied both where it has been used as part of another composite mark or where it is used in conjunction with another mark, even if the combination of marks is itself registered as a trade mark (judgment of 18/04/2013, C-12/12, SM JEANS/LEVI‘S, EU:C:2013:253, § 36.). Similarly, the Court has clarified that use can be genuine where a figurative mark is used in conjunction with a word mark superimposed over it, even if the combination of those two marks is itself registered, to the extent that the differences between the form in which that trade mark is used and that in which it was registered do not change the distinctive character of that trade mark as registered (judgment of 18/07/2013, C-252/12, Specsavers, EU:C:2013:497, § 31).

The applicant also considers that the earlier sign is not used as a trade mark but rather as a shop sign. Indeed, the purpose of a company, trade or shop name is not, of itself, to distinguish goods or services. The purpose of a company name is to identify a company, whereas the purpose of a trade name or a shop name is to designate a business which is being carried on. Accordingly, where the use of a company name, trade name or shop name is limited to identifying a company or designating a business which is being carried on, such use cannot be considered ‘in relation to goods or services within the meaning of Article 5(1) of the directive, i.e. it cannot be considered to be used as a trade mark (11/09/2007, C‑17/06, Céline, EU:C:2007:497; 13/05/2009, T‑183/08, Jello Schuhpark II, EU:T:2009:156).

Yet, it is to be noted that marks cannot be directly used ‘on’ services. Therefore, as regards marks registered for services, their use will generally be on business papers, in advertising, or in some other way directly or indirectly related to the services. Where the use on such items demonstrates genuine use, such use will be sufficient. For instance, trade marks fulfil their function of indicating the commercial origin of goods or services and symbols of the goodwill of their owner not only when they are actually used on or for goods or services, but also when they are used in advertising. In fact, the advertising or market communication function of trade marks is one of their most important functions. In the present case, numerous pictures displaying the earlier mark such as stickers on vehicles, key rings, street signage, car rental comparison websites and the opponent's websites, signs at airport car rental booths, signs on airport shuttle buses, signs at airport turn-off ramps, direction signs are all different forms of market communication. For instance, the presence of the trade mark on websites can show inter alia the nature of its use or the fact that services bearing the mark have been offered to the public.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used 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, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the services covered by the earlier trade mark.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

In the present case, the evidence shows genuine use of the trade mark for the following services:

Class 39: Vehicle rental and leasing services.

Therefore, the Opposition Division will only consider the abovementioned services in its further examination of the opposition.

Finally, it is also clear from the evidence that the mark has been used in relation to the above services for a substantial period of time, dating back to the end of the previous century and that the reputation of the ‘e’ logo had been acquired prior to the filing date of the contested trade mark (i.e. 25/05/2016), at least in the United Kingdom.

Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade mark has been used in the relevant territory and that it enjoys a certain degree of recognition among the public in the United Kingdom for the aforesaid services.

For the sake of completeness, the applicant also requested proof of use of the following earlier marks:

 EUTM No 937 4729 for the following goods and services in relation to which the opponent also claimed reputation:

Class 12: Vehicles, namely, automobiles, trucks, cars, land vehicles; excluding chains of any kind for vehicles.

Class 35: Vehicle dealership services, namely, dealerships in the field of automobiles, trucks, cars, land vehicles; vehicle fleet management services, namely, tracking and monitoring vehicles for commercial purposes, and business consultation services relating to the management of a fleet of vehicles for commercial purposes.

Class 36: Vehicle fleet management services, namely, facilitating and arranging for financing, and insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others.

Class 37: Vehicle repair services; vehicle fleet management services, namely, vehicle repair and maintenance.

Class 39: Vehicle rental and leasing services; and reservation services for the rental and leasing of vehicles, namely, rental reservations for automobiles, trucks, cars, land vehicles.

 EUTM No 9 374 497 for the following goods and services in relation to which the opponent also claimed reputation:

Class 12: Vehicles, namely, automobiles, trucks, cars, land vehicles; excluding chains of any kind for vehicles.

Class 35: Vehicle dealership services, namely, dealerships in the field of automobiles, trucks, cars, land vehicles; vehicle fleet management services, namely, tracking and monitoring vehicles for commercial purposes, and business consultation services relating to the management of a fleet of vehicles for commercial purposes.

Class 36: Vehicle fleet management services, namely, facilitating and arranging for financing, and insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others.

Class 37: Vehicle repair services; vehicle fleet management services, namely, vehicle repair and maintenance.

Class 39: Vehicle rental and leasing services; and reservation services for the rental and leasing of vehicles, namely, rental reservations for automobiles, trucks, cars, land vehicles.

 EUTM No 36 335 for the following services in relation to which the opponent also claimed reputation:

Class 39: Vehicle rental services; vehicle leasing services; vehicle towing services; vehicle breakdown recovery services; recovery of vehicles; vehicle rental and leasing, and reservation services for vehicle rental and/or leasing.

Without entering further in detail, suffice it to say at this stage that the opponent's evidence analysed above is the same for the sake of proving use of these earlier marks. Therefore, the evidence would, at best, show genuine use of the trade mark for the same services, namely for vehicle rental and leasing services in Class 39. In addition, the evidence would, at best, show that these earlier marks are reputed for these services only.

Finally, the opposition is also based on other earlier trade marks in relation to which the applicant did not request proof of use but for which the opponent also claimed reputation in relation to all their goods and services. Apart from the fact that the evidence would, at best, show that these earlier marks are reputed for vehicle rental and leasing services in Class 39, for reasons of economy of procedure the Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European trade mark registration No 5 323 126, in relation to which it has been established that the evidence shows genuine use and reputation of the trade mark for vehicle rental and leasing services in Class 39.

a) The signs

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).

The contested sign contains an element that is barely perceptible, namely the word 'MOTOSHARING' written in tiny black characters at the bottom of the sign. The Office considers that this element will be disregarded by the relevant public and that, therefore, it must be considered to be is a negligible element. Indeed, a negligible element is an element that, given its size and/or position in the sign, is not noticeable at first sight or is part of a complex sign. As a consequence, the aforementioned element will not be taken into consideration in the comparison of the signs at issue. The remaining elements of the contested sign are both perceptible but contrary to the applicant's view and regardless of its intentions when designing the sign, the initial element will clearly be perceived by the public as a stylised representation of the letter 'e'. This element is clearly dominant given its size and its position within the sign and its proportions in relation to the remaining element, 'eCooltra', which is represented in a much smaller font. In response to the applicant's argument it must also be underlined that the 'e' element is not merely figurative element, it is a verbal element which is represented in a specific way using a particular typography and font as well as colours. Therefore, there is no reason whatsoever to consider that the element 'eCooltra', placed in secondary position, would have a stronger impact on the consumer than the 'e' and the applicant's argument based on the 'figurative' element 'e' must be dismissed.

Finally, according to the applicant, the letter 'e' of 'eCooltra' will evoke connected words such as environment, ecology and electric to an ecologically friendly public. It is true that the lower case 'e' is often used in trade in particular to evoke the 'electronic' character or connection of goods or services. In the present case, considering that 'Cooltra' does not actually have a meaning, as acknowledged by the applicant, one may wonder whether the preceding letter 'e' will be perceived as argued by the applicant. Nevertheless, this issue is immaterial to the comparison of the signs at issue since essentially it can already be stated, as developed below, that the similarities between the signs lay in the fact that the signs contain a single, individual, letter 'e' which is, moreover, the dominant element of the contested sign. For the same reasons, whether the fancy word 'Cooltra' is the result of the sum of the English word 'Cool' and '-tra' which is supposedly short for transport or traction is equally immaterial to the result of the comparison between the signs. In any event, the distinctiveness of the different components of 'eCooltra' could be called into question since, if perceived as contended by the applicant, these components would evoke characteristics of the goods and services. Be it all as it may, it remains that the signs as a whole have no meaning in relation to the respective goods and services and therefore, they are both intrinsically distinctive to an average degree. However, as seen above, the earlier mark is reputed in the United Kingdom for vehicle rental services. As a consequence, the analysis below focuses on the public of the United Kingdom.

Visually, the signs coincide in that they both contain a representation of a lowercase letter 'e'. Yet, these representations are quite different, as in the earlier mark, the letter ‘e’ is represented with a triple outline (white/green/white), against a green rectangular background and is, moreover, characterised by the fact that the horizontal lines cross the curve of the letter 'e' on its left. In the contested sign, the representation of the letter 'e', in shades of light green and light blue, is more angular and the horizontal line does not reach the vertical line on the left. The signs differ further in the remaining elements of the contested sign which have no counterparts in the earlier mark. Therefore, the signs are visually similar to a very low degree.

Aurally, the pronunciation of the marks coincides in the sound of the letter 'e' which is the only verbal element of the earlier and the first and dominant verbal element of the contested sign. To the extent that 'eCooltra' is pronounced at all, the pronunciation of the signs differs in the sound of this additional element of the contested sign. However, it has been confirmed by case-law that consumers generally only refer to the dominant elements in trade marks (03/07/2013, T-206/12, LIBERTE american blend, EU:T:2013:342, § 43-44) and in any case, that they tend to shorten marks containing several words. Therefore, part of the public under analysis, at least, will merely pronounce the dominant element of the contested sign and as a consequence, for this part of the public under analysis, the signs are aurally identical.

Conceptually, as both signs will be perceived as containing a single letter 'e' which is the dominant element of the contested sign, and even taking into account that the secondary element of the contested sign 'eCooltra' may be perceived by part of the public under analysis as containing references to the ecological or electronic or to the 'cool' character of the contested goods and services or to their relationship with transport, the signs are conceptually highly 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.

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

The opposition is directed against the following goods and services:

Class 9: Software and applications for mobile devices; computer software applications, downloadable; application software for mobile devices; software for application and database integration; application software for cloud computing services; computer databases; computer software for database management; computer software for creating searchable databases of information and data; contents gauges; GPS transmitters and receivers; global positioning instruments; software for GPS navigation systems; software for satellite positioning systems; website development software; computer software.

Class 12: Motorbikes; motorized scooters; parts and fittings for motorcycles.

Class 39: Scooters rental; motorcycle rental; hiring of motorcycles accessories, arranging and booking of sightseeing tours; passenger road transport, travel agency services; escorting of travellers; chauffeur services; global positioning system navigation services; vehicle tracking by computer or GPS; vehicle location services; location of motorcycles

Some of the contested goods and services are identical or similar to different degrees to the opponent's services whereas others, for instance the goods in Class 9, are dissimilar to the opponent's services. The goods and services at issue are mainly addressed at the general public with an average degree of attention. The applicant argues that its services are addressed to a public concerned with environmental issues and young people with low economical income who need to rent a scooter per minutes while the opponent's services are addressed to general public who need to rent a four wheels vehicle without immediate needs. However, the way the trade marks are or will be used on the market is irrelevant for the comparison of the goods and services and the signs under Article 8 EUTMR since the examination carried out by the Office is a prospective one and the particular circumstances in which the services covered by the marks are actually marketed have, as a matter of principle, no impact on the assessment carried out by the Office because they may vary in time depending on the wishes of the proprietors of the trade marks (15/03/2007, C-171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C-354/11 P, G, EU:C:2012:167, § 73; 21/06/2012, T-276/09, Yakult, EU:T:2012:313, § 58). Therefore, when considering whether or not the EUTM application falls under any of the relative grounds for refusal, it is the opponent’s rights and their scope of protection as registered (except where proof of use has been validly requested) and the contested services as applied for, that are relevant. Consequently, the applicant’s claim as regards the alleged lack of real conflict between the signs on the marketplace is dismissed, as it has no impact for the purposes of the present assessment.

As regards the distinctiveness of the earlier mark, reference is made to the conclusions drawn in the section a), according to which, the earlier mark has gained a certain reputation in the United Kingdom in connection with ‘vehicle rental services’ in Class 39. Even though some of the contested goods in Classes 9, 12 may actually originate from different economic sectors from the opponent’s services in Class 39 one must bear in mind that nowadays it has become usual for companies to diversify their activities on several interconnected markets and the goods and services at issue actually have some points in common and are therefore connected to a certain degree. The contested goods in Classes 9 are software and applications for mobile devices; computer software applications, downloadable; application software for mobile devices; software for application and database integration; application software for cloud computing services; computer databases; computer software for database management; computer software for creating searchable databases of information and data; contents gauges; GPS transmitters and receivers; global positioning instruments; software for GPS navigation systems; software for satellite positioning systems; website development software; computer software are essentially different types of software and devices which are currently used in connection with vehicles and their use may also allow for better services such as the opponent's in Class 39. The goods in Class 12, namely motorbikes; motorized scooters; parts and fittings for motorcycles satisfy transportation/travelling needs as do the opponent's services which allow people to rent vehicles for travelling purposes. Moreover vehicle ownership and temporary leasing and/or rental arrangements are increasingly becoming two alternatives to satisfy the same transportation need. In relation to the applicants' services in Class 39, namely scooters rental; motorcycle rental; hiring of motorcycles accessories, arranging and booking of sightseeing tours; passenger road transport, travel agency services; escorting of travellers; chauffeur services; global positioning system navigation services; vehicle tracking by computer or GPS; vehicle location services; location of motorcycles, it should be noted that the applicant's argument according to which the opponent uses its mark only in relation with four-wheeled vehicles whereas the contested sign seeks protection for the services in relation to two-wheeled vehicles does not change anything to the fact that a connection can be established between the marks at issue. Indeed, while it may well be true that the opponent uses its mark only in relation to cars, for instance, the consumer may still think that the marks belong to the same company or to economically-related companies but are used for different types of vehicles.

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

c) Risk of injury

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

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

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

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

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T 60/10, Royal Shakespeare, EU:T:2012:348, § 53).

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

The opponent claims the following: there is a clear possibility and likelihood that the applicant might freeride on the coattails of Enterprise’s branding in order to benefit from and exploit its power of attraction. In addition, the opponent submits that by virtue of the use of the applicant's mark there is a real risk of “diluting”, “blurring” or otherwise disrupting the connection in the consumer’s mind between a sign recognised as a “lower case green ‘e’” and Enterprise.

In other words, 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 mark and be detrimental to the distinctive character and repute of the earlier trade mark.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free‑riding on the coat‑tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following.

There is a substantial and material risk that the applicant will use Enterprise’s significant investment in developing its reputation for customer services to its own advantage; use Enterprise’s significant investment in marketing and promoting its “lower case ‘e’” branding to its own advantage. This is because, inter alia, Enterprise’s “lower case ‘e’ branding is indicative of its business, which, in turn, will lead consumers to see a link or an association between Enterprise and the applicant by virtue of the contested sign where this link or association did not exist previously. On this basis there is a clear possibility and likelihood that the applicant might freeride on the coattails of Enterprise’s branding in order to benefit from and exploit its power of attraction.

According to the Court of Justice of the European Union

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

In the present case, it has been found that the signs at issue are similar to the extent that they coincide in the letter ‘e’. Moreover, the earlier mark’s services display a sufficiently close connection to the contested goods and services in Classes 9, 12 and 39. It must be also recalled that the protection under Article 8(5) EUTMR extends to all cases where use of the contested trade mark is likely to have an adverse effect on the earlier mark, in the sense that it is, inter alia, likely to result in misappropriation of the powers of attraction or exploitation of the earlier mark’s image and prestige (unfair advantage of the distinctive character or repute). Furthermore, taking unfair advantage does not necessarily require a deliberate intention to exploit the goodwill attached to someone else’s trade mark. The concept of taking unfair advantage ‘concerns the risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation’ (judgments of 19/06/2008, T-93/06, Mineral Spa, EU:T:2008:215, § 40; 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40; 30/01/2008, T-128/06, Camelo, EU:T:2008:22, § 46).

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

Other types of injury

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

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

d) 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 goods and services.

As mentioned above, the comparison of the signs at issue under Article 8(5) EUTMR has been performed in relation to the part of the public in the United Kingdom. A risk of injury for only part of the relevant public of the European Union is sufficient to reject the contested application.

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

Begoña URIARTE VALIENTE

Martina GALLE

Jorge ZARAGOZA GÓMEZ

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.