OPPOSITION No B 2 941 030

IG Group Limited, Cannon Bridge House, 25 Dowgate Hill, London EC4R 2YA, United Kingdom (opponent), represented by Withers & Rogers LLP, 4 More London Riverside, London SE1 2AU, United Kingdom (professional representative)

a g a i n s t

Bytdem Financial Inc, Quijano Chambers, P.O.BOX:3159, Road Town, Tortola, Virgin Islands (british) (applicant), represented by Angela Onoufriou, Fragklinou Rousvelt 108 A.T Stavrinides Tower, Office 201, 3011 Limassol, Cyprus (professional representative).

On 05/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 941 030 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 16 659 815 (word mark:
‘IC Markets’), namely against some of the goods and services in Classes 9, 16 and 42 and against all the services in Classes 35 and 36. The opposition is based on the following earlier trade marks:

1. European Union trade mark registration No 1 895 069 (word mark: ‘IG’) for goods and services in Classes 9, 16, 36 and 41;

2. European Union trade mark registration No 12 103 578 (figurative mark:
   ‘ ’) for services in Class 41;

3. European Union trade mark registration No 6 366 116 (word mark:
   ‘IG MARKETS’) for goods and services in Classes 9, 16, 36 and 41;

4. European Union trade mark registration No 6 366 348 (word mark:
   ‘IG INDEX’) for goods and services in Classes 9, 16, 36 and 41;

5. European Union trade mark registration No 12 323 275 (figurative mark:
   ‘ ’) for goods and services in Classes 9, 36 and 41.

6. United Kingdom trade mark registration No 2 619 604 (figurative mark:
   ‘ ’) for goods and services in Classes 9, 36 and 41;

7. International registration No 1 142 992 (figurative mark:
   ‘ ’) designating United Kingdom for goods and services in Classes 9 and 36;

8. United Kingdom trade mark registration No 2 639 505 (word mark: ‘IG’) for goods and services in Classes 9, 36 and 41;

The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR. Furthermore, the opponent invoked as well Article 8(4) EUTMR, based on non-registered word mark ‘IG’ in the United Kingdom. Insofar, the opponent invoked Article 8(4) EUTMR.

SUBSTANTIATION of earlier trade marks No 6, 7 and 8 (UK trade marks and IR designating UK)

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to submit the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in Article 7(1) EUTMDR and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Article 7(2)(a)(ii) EUTMDR. Where the evidence concerning the registration of the trade mark is accessible online from a source recognised by the Office, the opposing party may provide such evidence by making reference to that source — Article 7(3) EUTMDR.

In the present case, the notice of opposition was not accompanied by any evidence as regards the earlier trade marks on which the opposition is, inter alia, based.

On 23/08/2017 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 28/12/2017. It was extended until 28/02/2018 (the Office´s letter of 05/01/2018).

The opponent did not submit any evidence concerning the substantiation of the earlier trade marks. Moreover, the opponent did not make reference to evidence accessible online from a source recognised by the Office.

According to Article 8(1) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR, the opposing party has not submitted any evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, or where the evidence submitted is manifestly irrelevant or manifestly insufficient, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on these earlier marks.

PROOF OF USE of earlier trade marks No 1, 3 and 4 (see above)

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

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

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely the above cited three European Union trade marks.

The date of filing of the contested application is 28/04/2017. 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 28/04/2012 to 27/04/2017 inclusive.

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

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

European Union trade mark registration No 1 895 069 (No 1)

Class 9: Computer software and computer programs; computer apparatus; data carriers; provision of on-line electronic publications (downloadable) from the Internet, databases, or databanks; encoded magnetic cards, all relating to financial, betting, gambling and/or gaming services.

Class 16: Printed matter and printed publications; books; journals; magazines; periodical publications; newsletters; handbooks and directories; calendars; diaries; stationery; writing instruments.

Class 36: Credit card, debit card and charge card betting services; information services relating to the aforesaid.

Class 41: Betting, gambling and gaming services; on-line betting, gambling and gaming services; off shore betting, gambling and gaming services; information services relating to all the aforesaid.

European Union trade mark registration No 6 366 116 (No 3)

Class 9: Computer software, computer hardware; computer apparatus; data carriers; electronic publications (downloadable) and information provided on-line from a computer database and/or the Internet; encoded magnetic cards, all relating to financial services, gambling and gaming services.

Class 16: Printed matter and printed publications; books; journals; magazines; periodical publications; newsletters; handbooks and directories; calendars; diaries; stationery; writing instruments.

Class 36: Financial services; insurance services; financial services provided from a computer database or the Internet, all relating to betting, financial trading, gambling, gaming lotteries and bookmaking; provision of financial information relating to betting, financial trading, gambling, gaming lotteries and bookmaking; information, advisory and consultancy services related to all the aforesaid services; all the aforesaid services also provided on-line from a computer database and/or from the Internet; financial trading services.

Class 41: Betting, gambling, gaming and lottery services; bookmaking services; off shore betting, gambling, gaming and lottery services; entertainment services; sporting activities; credit card, debit card and charge card betting, gambling, gaming and lottery services; information, advisory and consultancy services relating to all the aforesaid; all the aforesaid services also provided on-line from a computer database and/or from the Internet.

European Union trade mark registration No 6 366 348 (No 4)

Class 9: Computer software, computer hardware; computer apparatus; data carriers; electronic publications (downloadable) and information provided on-line from a computer database and/or the Internet; encoded magnetic cards, all relating to financial services, gambling and gaming services.

Class 16: Printed matter and printed publications; books; journals; magazines; periodical publications; newsletters; handbooks and directories; calendars; diaries; stationery; writing instruments.

Class 36: Financial services; insurance services; financial services provided from a computer database or the Internet, all relating to betting, financial trading, gambling, gaming lotteries and bookmaking; provision of financial information relating to betting, financial trading, gambling, gaming lotteries and bookmaking; information, advisory and consultancy services related to all the aforesaid services; financial trading services; all the aforesaid services also provided on-line from a computer database and/or from the Internet.

Class 41: Betting, gambling, gaming and lottery services; bookmaking services; off shore betting, gambling, gaming and lottery services; entertainment services; sporting activities; credit card, debit card and charge card betting, gambling, gaming and lottery services; information, advisory and consultancy services relating to all the aforesaid; all the aforesaid services also provided on-line from a computer database and/or from the Internet.

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

On 03/08/2018, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 08/10/2018 to submit evidence of use of the earlier trade marks. On 05/10/2018, within the time limit, the opponent referred to the documents submitted in these proceedings on 28/02/2018 to file further facts and evidence.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

• Annual reports of the opponent’s company, dated 2012-2017, including the annual increase of its revenue and examples of advertising endeavours throughout Europe in the ‘Annual Report Year End May 2016’. These reports essentially contain the balance sheets of the opponent, including fixed and current assets, profit and loss accounts and other relevant balance sheet items that document the economic power of the opponent (Annex 1).

• Examples of press coverage, accolades and events that the opponent has sponsored and advertisement spaces on public transport exhibiting the ‘IG’ mark across Europe. These advertising initiatives were freely available to the public, such as in a weekly or monthly periodical magazine, physically and/or online (Annex 2).

The Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade marks were genuinely used in the relevant territory during the relevant period of time.

Figures from annual reports of the opponent in different years (Annex 1) provide information on the profitability and economic power of the company, but do not give any information in relation to the marks to be assessed, which are also different, namely ‘IG’, ‘IG MARKETS’ and ‘IG INDEX’. It would have been up to the opponent to provide the Office with a clear overview of the marks to be assessed, firstly with information relating to each trade mark and secondly with the goods and services to be assessed. Even if, in favour of the opponent, it continues to be assumed that the figures presented refer to ‘IG’, it does not become clear to which goods and services this should apply. In that regard, the opponent should have provided the Office with a transparent overview of the goods and services to be assessed. Since this has not happened, it has to allow itself to be credited with the resulting consequences. It is also not the Office’s job to select the information from the annual reports of different years that may seem favourable to the opponent. That would violate its existing duty of neutrality.

Moreover, the information in Annex 2 is not appropriate to significantly contribute to the proof of use of the earlier marks because they do not contain information on their extent of use. At best, they can be used as supplementary material to otherwise informative documents that are not available here (refer to explanations of Annex 1).

Therefore, neither Annexes 1 nor 2, in their entirety, can provide proof of use of the earlier marks.

Therefore, the opposition must be rejected pursuant to Article 47(2) EUTMR and Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017).

The procedure continues on the basis of earlier European Union trade mark registration No 12 103 578 for which no proof of use was claimed (No 2, see above).

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR (in relation to European Union trade mark registration No 12 103 578 (No 2, see above).)

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically‑linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods and services

The services in Class 41 on which the opposition is based are the following:

Betting, gambling, gaming and lottery services; bookmaking services; off shore betting, gambling, gaming and lottery services; entertainment services; sporting activities; credit card, debit card and charge card betting, gambling, gaming and lottery services; information, advisory and consultancy services relating to all the aforesaid; all the aforesaid services also provided on-line from a computer database and/or from the Internet.

The contested goods and services in Classes 9, 16, 35, 36 and 42 are the following:

Class 9: Recorded content.

Class 16: Printed matter; stationery and educational supplies.

Class 35 Advertising, marketing and promotional services; Purchasing of goods and services for other businesses; Procurement of contracts for the purchase and sale of goods and services; Mediation of trade business for third parties; Negotiation and conclusion of commercial transactions for third parties; Negotiation and conclusion of commercial transactions for third parties via telecommunication systems; Arranging commercial transactions, for others, via online shops; Arranging subscriptions to Internet services; Arranging of buying and selling contracts for third parties; Arranging of trading transactions and commercial contracts; Business analysis, research and information services; Business assistance, management and administrative services.

Class 36: Financial and monetary services, and banking; Fundraising and sponsorship; Insurance underwriting; Safe deposit services; Valuation services.

Class 42: Technology services; IT services.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

The contested goods and services are recorded content (Class 9), which are recorded data, different goods of paper (Class 16), services provided by people or organisations whose main activity is the assistance in the operation or management of a trading company, or the assistance in carrying out the business or commercial activity of an industrial or commercial enterprise, as well as the services of advertising companies in relation to all types of goods or services mainly concerned with communications to the public and with declarations and advertisements by any means of dissemination (Class 35), financial and monetary affairs services (Class 36) and IT services (Class 42).

The services of the earlier trade mark are (playful) entertainment.

The contested goods and services have different natures and purposes from the opponent’s services. Furthermore, they are neither complementary nor in competition. Public, producers/suppliers, distribution channels and methods of use are also different. Consumers would not think that these goods and services come from the same undertaking or economically linked undertakings. The opponent has not submitted any reasons for a claim of similarity. This also applies to the applicant’s services in Class 36 and the opponent’s services in Class 41 because Class 36 essentially covers the services rendered in financial and monetary matters that are very different to those of the earlier trade mark. Therefore, the goods and services are dissimilar.

b) Conclusion

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

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

The procedure continues on the basis of earlier European Union trade mark registration No 12 323 275 (No 5 see above) for the same legal basis, namely Article 8(1)(b) EUTMR.

c) The goods and services

The goods and services in Classes 9, 36 and 41 on which the opposition is based are the following:

Class 9: Computer software, computer hardware; computer apparatus; data carriers; electronic publications (downloadable) and information provided on-line from a computer database and/or the Internet; encoded magnetic cards, all relating to financial services, gambling and gaming services.

Class 36: Financial services; insurance services; financial services provided from a computer database or the Internet, all relating to betting, financial trading, gambling, gaming lotteries and bookmaking; provision of financial information relating to betting, financial trading, gambling, gaming lotteries and bookmaking; information, advisory and consultancy services related to all the aforesaid services; financial trading services; all the aforesaid services also provided on-line from a computer database and/or from the Internet.

Class 41: Betting, gambling, gaming and lottery services; bookmaking services; off shore betting, gambling, gaming and lottery services; entertainment services; sporting activities; credit card, debit card and charge card betting, gambling, gaming and lottery services; information, advisory and consultancy services relating to all the aforesaid; all the aforesaid services also provided on-line from a computer database and/or from the Internet.

The contested goods and services in Classes 9, 16, 35, 36 and 42 are the following:

Class 9: Recorded content.

Class 16: Printed matter; stationery and educational supplies.

Class 35 Advertising, marketing and promotional services; Purchasing of goods and services for other businesses; Procurement of contracts for the purchase and sale of goods and services; Mediation of trade business for third parties; Negotiation and conclusion of commercial transactions for third parties; Negotiation and conclusion of commercial transactions for third parties via telecommunication systems; Arranging commercial transactions, for others, via online shops; Arranging subscriptions to Internet services; Arranging of buying and selling contracts for third parties; Arranging of trading transactions and commercial contracts; Business analysis, research and information services; Business assistance, management and administrative services.

Class 36: Financial and monetary services, and banking; Fundraising and sponsorship; Insurance underwriting; Safe deposit services; Valuation services.

Class 42: Technology services; IT services.

Some of the contested goods and services are identical or similar to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

d) Relevant public – degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention is between average and high, because the partly infrequently purchased goods and services will be selected carefully.

5. The signs

	IC Markets
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 is a word mark that is protected in all different typefaces. The earlier trade mark is a figurative mark consisting of a rather basic rectangle with the letter combination ‘IG’ inside, written in a special manner with a kind of a 3D effect and the verbal element ‘GROUP’ below the ‘IG’ element.

The verbal element ‘GROUP’ of the earlier trade mark will almost be internationally understandable as it refers to a group or a merger of companies. This element is non-distinctive for all the goods and services and only refers to the kind of organisation of the opponent. The same applies for the basic simple figurative elements of the earlier trade mark.

The element ‘Markets’ of the contested sign will almost be internationally understandable as it refers to ‘an area or arena in which commercial dealings are conducted’ (Oxford Dictionary). This element is non-distinctive for all the goods and services and only refers to the place where the goods and services are offered.

The element ‘IG’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

The element ‘IC’ of the contested sign will be understood by a part of the public as a common abbreviation for ‘intercity (trains)’. Since it has no meaning for the goods and services, it is distinctive. The same applies for the public without that comprehension.

The earlier mark has no element that could be considered clearly more dominant than other elements.

Visually and aurally, the signs differ in the above cited figurative elements of the earlier trade mark, in its additional verbal element ‘GROUP’ and in the verbal element ‘Markets’ that is only part of the contested sign. Since these elements are all non-distinctive, they cannot influence the outcome in a relevant manner. However, they have to be taken into account to a certain degree. The remaining letter combinations ‘IC’ and ‘IG’ differ in the typeface of the earlier trade mark and in their second letters ‘G’ v ‘C’. Even taking into account that these letters have some similarities, the letter combinations ‘IG’ and ‘IC’, as a relevant part of the signs, are rather short so the target public will notice the differences. The letters will be pronounced as single ones like ‘I’, ‘G’ and ‘I’, ‘C’ depending on the language, this can have different impact. Moreover, in this respect, the other words of the signs contribute to some deviation in rhythm, sound and pronunciation. Therefore, the signs are visually and aurally similar to a below-average degree.

Conceptually, if the letter combination ‘IC’ is not understood by a part of the public, the other elements are meaningless or non-distinctive without any consequences for the conceptual comparison, which is, therefore, neutral. If the letter combination ‘IC’ is understood by a part of the public in the above cited sense as an abbreviation for ‘intercity’ and the elements of the earlier trade mark are meaningless or non-distinctive, the signs are conceptually not similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

5. Distinctiveness of the earlier mark

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

The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness.

However, the opponent has submitted supporting documents proving the use of the earlier marks as well as proof of the reputation of the earlier marks. As already stated, the documents submitted to demonstrate proof of use were not sufficient. Even if the conditions for the enhanced distinctiveness are not completely identical, the ones required for enhanced distinctiveness and reputation are higher than those for the proof of use as it is logically not possible to prove a certain awareness of a trade mark without proving that it is used on the market. Consequently, no reputation can be asserted on presentation of matching documents if it is already lacking proof of use in which the conditions are lower. This is also the case here, and reference is made to the statements made above.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some non-distinctive elements in the mark, as stated above in section e) of this decision.

5. Global assessment, other arguments and conclusion

The essential function of the trade mark is to guarantee the identity of the origin of the marked product for the consumer or end user by enabling him, without any likelihood of confusion, to distinguish a product or service from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EUTMR seeks to uphold, it must offer a guarantee that all the goods or services showing the mark have originated under the control of a single undertaking which is responsible for their quality (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 28; see also recital 7 of the EUTMR).

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

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17).

Taking into account the not more than below average degree of visual and aural similarity, the neutral outcome of the conceptual comparison (for a part of the public), the at least average of attention of the public, the not more than average degree of distinctiveness of the earlier trade mark and the limited scope of protection because of some non-distinctive elements in the earlier trade mark, there is, even for assumed identical goods and services, no likelihood of confusion. That is even more so when the degree of attention of the public is high and when the outcome of the conceptual comparison is not similar.

Contrary to the opponent’s arguments, the differences between the signs are sufficient to prevent a likelihood of confusion. The public will not think that the signs come from the same undertaking or economically linked undertakings.

Therefore, the opposition must be rejected as not well founded under Article 8(1)(b) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR (in relation to earlier EUTM
No 12 103 578 (No 2, see above) and No 12 323 275 (No 5, see above).

As the evidence submitted in relation to reputation relates to all the earlier trade marks the opponent claimed Article 8(5) EUTMR, the result on reputation therefore also relates to all the (remaining) earlier rights invoked.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

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

• The signs must be either identical or similar.

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

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

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T 345/08 & T 357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

Reputation of the earlier trade marks (No 12 103 578 (No 2, see above) and
No 12 323 275 (No 5, see above)

The evidence under the section ‘Proof of use’ submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade marks has already been examined above under the grounds of Article 8(1)(b) EUTMR and the received documents have been the same for all earlier trade marks with the consequence of the same outcome. As the opponent could not prove the use for the goods and services, because the documents are neither sufficient for that aspect nor sufficient to demonstrate the reputation for the goods and services as explained above, the reputation also has not been proved. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

NON REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR (in relation to the UK word mark ‘IG’)

The opposition is based on the above cited non-registered word mark ‘IG’ in the United Kingdom.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non- registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The opposition is based on non-registered trade marks used in the United Kingdom. The opponent claims to have the right to prohibit the use of the contested trade mark under the tort of passing off.

A successful claim for passing off must satisfy three cumulative conditions. Failure to satisfy any one of them means that the claim cannot succeed. The conditions are:

Firstly, the opponent must prove that it enjoys goodwill or is known for specific goods and services under its marks. The evidence must show that the opponent’s mark is recognised by the public as distinctive for the opponent’s goods and services. For the purposes of opposition proceedings, goodwill must be proven to have existed before the filing date of the contested trade mark.

Secondly, the opponent must demonstrate that the applicant’s mark would be likely to lead the public to believe that the applicant’s services originate from the opponent. In other words, the public would be likely to believe that services put on the market under the contested trade mark are actually those of the opponent.

Thirdly, the opponent must show that it is likely to suffer damage as a result of the applicant’s use of the contested trade mark.

For the purposes of proving the acquisition of that right, the opponent must prove that it enjoys goodwill for the goods and services claimed under its marks.

The opponent has not split the documents submitted for the different legal bases as mentioned before. In favour of the opponent, it was assumed that the documents submitted under this legal basis should also refer to Article 8(1)(b) and Article 8(5) EUTMR. Therefore, a re-listing of the annexes is unnecessary, since this has already been done under Article 8(1)(b) EUTMR. As already stated, the review of the documents has shown, that the use and a reputation of the above cited earlier trade marks could not be proved. Even if the definitions of increased distinctiveness or reputation/goodwill or well known are different under Article8 (1)(b) and Article 8(4) EUTMR, it must nevertheless be stated that there are substantive overlaps between them that go clearly beyond proving the pure use of the marks on the relevant market. In other words, for both, namely reputation of a trade mark and enjoyed goodwill in relation to specific goods and services, an additional positive perception by the relevant public has to be proved. This must be demonstrated in detail (broken down) by the opponent both for the signs in question and for the goods and/or services to be assessed. Since no use/reputation has been proved, the Opposition Division finds that the opponent has failed to demonstrate that they enjoy goodwill for its goods and services in the mind of the purchasing public for the signs on which the opposition is based.

Since all three conditions to sustain a passing off claim must be met for it to be successful, the opposition is dismissed since the opponent failed to prove that it enjoys goodwill or is known for specific goods and services under its mark.

In addition for the sake of completeness, it is pointed out that, apart from claiming a reputation and arguing that the consumers will establish a link between the trade marks because of the similarities between them, the opponent did not submit any facts, arguments or evidence that could support the conclusion that use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier sign. The opponent merely claims that use of the contested trade mark would take unfair advantage of, and/or be detrimental to, the distinctive character or repute of the earlier sign. However, the opponent should have submitted 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. Given that the opponent was unable to establish that the contested sign would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier sign, the opposition is considered not well founded under Article 8(4) EUTMR.

Therefore, there is no need to consider whether the other conditions are met.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are 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

Gonzalo BILBAO TEJADA

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.