OPPOSITION No B 2 957 598

OPPOSITION DIVISION

OPPOSITION No B 2 957 598

Apple Inc., One Apple Park Way, 95014 Cupertino, United States of America (opponent), represented by Locke Lord LLP, 201 Bishopsgate, London EC2M 3AB, United Kingdom (professional representative)

a g a i n s t

Zhang Chunxia, 9B Tower 1 No. 36 Bldg. Chun Huang Si Ji Garden Minzhi Street Longhua New District, Shenzhen Guangdong, People’s Republic of China (applicant), represented by Cabinet Flechner, 22 avenue de Friedland, 75008 Paris, France (professional representative).

On 19/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 957 598 is partially upheld, namely for the following contested goods:

Class 9: Humanoid robot with artificial intelligence; Smart watches (data processing); Downloadable mobile applications; Virtual reality game software; Smart phone shells; Smart phone cases; Smartphones; Protective film for mobile phone screen; Headsets; Camcorders; Cameras; Electric wires; Plugs, sockets and other contacts [electric connections]; Portable power supply (rechargeable batteries); Batteries.

2. European Union trade mark application No 16 673 923 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 673 923 for the figurative trade mark , namely against all the goods in Classes 9, 11 and 21. The opposition is based on the following earlier rights:

- European Union trade mark registration No 10 569 259 for the word mark ‘SIRI’;

- United Kingdom trade mark registration No 3 191 988 for the word mark ‘SIRI’;

- International trade mark registration No 1 278 031 designating the European Union for the word mark ‘SIRI’;

- Well-known mark ‘SIRI’ in Germany, Belgium, Finland, Portugal, Bulgaria, Denmark, Lithuania, Luxembourg, Croatia, Latvia, France, Hungary, Sweden, Slovenia, Slovakia, United Kingdom, Ireland, Estonia, Malta, Greece, Italy, Spain, Austria, Cyprus, Czech Republic, Poland, Romania and Netherlands;

- Non-registered trade mark ‘SIRI’ in Germany, Belgium, Finland, Portugal, Bulgaria, Denmark, Lithuania, Luxembourg, Croatia, Latvia, France, Hungary, Sweden, Slovenia, Slovakia, United Kingdom, Ireland, Estonia, Malta, Italy, Greece, Spain, Austria, Cyprus, Czech Republic, Poland, Romania and Netherlands.

The opponent invoked Article 8(1)(b) (in conjunction with Article 8(2)(c) EUTMR for the well-known mark), Article 8(4) (for the non-registered marks) and Article 8(5) EUTMR.

SUBSTANTIATION

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 some of the earlier trade marks on which the opposition is based, namely United Kingdom trade mark registration No 3 191 988 for the word mark ‘SIRI’ and international trade mark registration No 1 278 031 designating the European Union for the word mark ‘SIRI’.

On 25/09/2017 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 31/01/2018.

The opponent did not submit any evidence concerning the substantiation of the above mentioned 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.

Therefore, the opposition will proceed only in relation to the remaining earlier rights, namely European Union trade mark registration No 10 569 259 for the word mark ‘SIRI’, well-known trade mark ‘SIRI’ (Article 6bis of the Paris Convention) and non-registered trade mark ‘SIRI’ in all the Member States of the EU.

REPUTATION — ARTICLE 8(5) EUTMR

With reference to Article 8(5) EUTMR, the opponent invoked earlier European Union trade mark registration No 10 569 259 claiming repute in the European Union in relation to all the goods and services covered by the registration.

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.

a) Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union.

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

In the present case, the contested trade mark was filed on 03/05/2017. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:

Class 9: Computers, computer peripheral devices, computer terminals; computer hardware; microprocessors, memory boards, monitors, displays, keyboards, cables, modems, printers, disk drives, adapters, adapter cards, connectors and drivers; apparatus for data storage; hard drives; miniature hard disk drive storage units; audio video discs, CD-ROMs, and digital versatile discs; blank computer storage media; magnetic data carriers; chips, discs and tapes bearing or for recording computer programs and software; random access memory, read only memory; solid state memory apparatus; mouse pads; telephones; facsimile machines, answering machines; cameras, video cameras; batteries; rechargeable batteries; chargers; chargers for electric batteries; MP3 and other digital format audio players; hand held computers, tablet computers, personal digital assistants, electronic organizers, electronic notepads; handheld digital electronic devices and software related thereto; handheld and mobile digital electronic devices for the sending and receiving of telephone calls, faxes, electronic mail, and other digital data; handheld digital electronic devices and software related thereto; electronic handheld units for the wireless receipt, storage and/or transmission of data and messages, and electronic devices that enable the user to keep track of or manage personal information; electronic communication equipment and instruments; telecommunications apparatus and instruments; telephone-based information retrieval software and hardware; mobile digital electronic devices for the sending and receiving of telephone calls, faxes, electronic mail, video, instant messaging, music, audiovisual and other multimedia works, and other digital data; global positioning system (GPS) devices; telephones, mobile telephones, video phones; parts and accessories for mobile telephones; voice recognition apparatus; digital voice recorders; wireless communication devices for voice, data or image transmission; earphones, headphones; audio speakers; sound recording and reproducing apparatus, amplifiers, electric phonographs, record players, high fidelity stereo apparatus, tape recorders and reproducing apparatus, microphones; digital audio and video recorders and players; audio cassette recorders and players, video cassette recorders and players, compact disc recorders and players, digital versatile disc recorders and players, digital audio tape recorders and players; radios; radio transmitters and receivers; audio, video, and digital mixers; car audio apparatus; computer software; computer games; computer software for creating, authoring, distributing, downloading, transmitting, receiving, playing, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, audio, video, and multimedia content, and electronic publications; operating system software, data synchronization software, application development software; computer software for personal information management; database management software; database synchronization software; character recognition software; voice recognition software; speech to text conversion software; voice-enabled software applications; telephony management software; electronic mail and messaging software; mobile telephone software; computer software for accessing, browsing and searching online databases; computer software for the redirection of messages, Internet e-mail, and/or other data to one or more electronic handheld devices from a data store on or associated with a personal computer or a server; computer software for the synchronization of data between a remote station or device and a fixed or remote station or device; downloadable electronic publications; fonts, typefaces, type designs and symbols in the form of recorded data; user manuals in electronically readable, machine readable or computer readable form for use with, and sold as a unit with, all the aforementioned goods; computer equipment for use with all of the aforesaid goods; electronic communications apparatus with multimedia functions for use with all of the aforesaid goods; electronic communications apparatus with interactive functions for use with all of the aforesaid goods; accessories, parts, fittings, and testing apparatus for all of the aforesaid goods; covers, bags and cases adapted or shaped to contain all of the aforesaid goods.

Class 28: Toys, games and playthings; electronic toys, games and playthings; musical toys, games and playthings; electronic hand-held game units; hand-held electronic games and apparatus other than those adapted for use with an external display screen or monitor; stand-alone video game machines incorporating a means of display; electronic computer games, other than those adapted for use with an external display screen or monitor; apparatus for electronic games other than those adapted for use with an external display screen or monitor; video games other than those adapted for use with an external display screen or monitor; amusement game machines; amusement apparatus incorporating a means of display; toy computers (not working); toy mobile telephones (not working); toy handheld electronic devices; toy audio apparatus; toy musical boxes; toy musical instruments; toy record players for playing tunes and cassettes; battery-operated toys; video output game machines for use with external display screen or monitor; stand alone video output game machines; interactive computer toys and games; playing cards; computer gaming machines; handheld electronic game units adapted for use with an external display screen or monitor; electronic games; parts and fittings for all the aforesaid goods.

Class 35: Business management; business administration; providing office functions; advertising agency services; advertising, marketing, and promotion services; advertising and marketing consultation; sales promotion services; promoting the goods and services of others; conducting market research; analysis of advertising response and market research; design, creation, preparation, production, and dissemination of advertisements and advertising material for others; media planning services; administration of consumer loyalty programs; arranging and conducting incentive rewards programs to promote the sale of goods and services; computerized database and file management; data processing services; creating indexes of information, sites and other resources available on global computer networks and other electronic and communications networks for others; providing, searching, browsing and retrieving information, sites, and other resources available on global computer networks and other electronic and communications networks for others featuring computers, tablet computers, computer software, multimedia products, interactive products, telecommunications apparatus, mobile phones, handheld and mobile digital electronic devices for the sending and receiving of telephone calls, faxes, electronic mail, video, instant messaging, music, audiovisual and other multimedia works, and other digital data; providing information, databases, directories, and podcasts in the fields of advertising; providing business and commercial information over computer networks and global communication networks; organizing content of information provided over a global computer network and other electronic and communications networks according to user preferences; providing business, consumer, and commercial information over computer networks and global communication networks; business services, namely, providing computer databases regarding the purchase and sale of a wide variety of products and services of others; compilations of directories for publishing on the Internet and other electronic, computer and communications networks; retail store featuring computer, electronic and entertainment products; retail store and online store services featuring computer, electronic and entertainment products provided via the Internet and other computer, electronic and communications networks; retail and online store services in the field of computers, tablet computers, computer hardware, computer software, computer peripherals, consumer electronics, telecommunications and multimedia goods and accessories, mobile phone, handheld mobile digital electronic devices, and other consumer electronics and accessories, peripherals, and carrying cases for such products, and demonstration of products relating thereto; retail store services in the field of computers, tablet computers, computer hardware, computer software, computer peripherals, consumer electronics, telecommunications and multimedia goods and accessories, mobile phone, handheld mobile digital electronic devices, and other consumer electronics and accessories, peripherals, and carrying cases for such products, and demonstration of products relating thereto, provided via the Internet and other computer, electronic and communications networks; retail store services in the field of entertainment featuring music, video, film, books, magazines, periodicals, newsletters, journals and other publications on a wide range of topics of general interest, television, games, sports, movies, television programs, musical works, pre-recorded audio and audiovisual works, and music related electronic products; retail store and online retail store services in the field of entertainment featuring music, video, film, books, magazines, periodicals, newsletters, journals and other publications on a wide range of topics of general interest, television, games, sports, movies, television programs, musical works, pre-recorded audio and audiovisual works, and music related electronic products, provided via the Internet and other computer, electronic and communications networks; retail store services featuring telecommunications apparatus, mobile phones, handheld and mobile digital electronic devices for the sending and receiving of telephone calls, faxes, electronic mail, video, instant messaging, music, audiovisual and other multimedia works, and other digital data, accessories, peripherals, and carrying cases for such devices; retail store services featuring computer, electronic and entertainment products, telecommunications apparatus, mobile phones, handheld mobile digital electronic devices, tablet computers, music related electronic products, and other consumer electronics, computer software, and accessories, peripherals, and carrying cases for such products, provided via the Internet and other computer, electronic and communications networks; product demonstrations provided in-store and via communications networks and other electronic and communications networks; retail store services in the field of books, magazines, periodicals, newsletters, journals and other publications on a wide range of topics of general interest, provided via the Internet and other computer, electronic and communications networks; retail store services in the field of entertainment featuring movies, television programs, pre-recorded audio and audiovisual works for sporting events, musical works, and audio and audiovisual works, via the Internet and other computer, electronic and communications networks; retail store services featuring computer, electronic and entertainment products, telecommunications apparatus, mobile phones, handheld mobile digital electronic devices, and other consumer electronics, computer software, and accessories, peripherals, and carrying cases for such products, via the Internet and other computer, electronic and communications networks; product demonstrations provided in-store and via global communications networks and other electronic and communications networks; subscription services, namely, providing subscriptions to text, data, image, audio, video, and multimedia content, provided via the Internet and other electronic and communications networks; providing downloadable pre-recorded text, data, image, audio, video, and multimedia content for a fee or pre-paid subscription, provided via the Internet and other electronic and communications networks featuring computers, tablet computers, computer hardware, computer software, computer peripherals, consumer electronics, telecommunications and multimedia goods and accessories, mobile phones, handheld mobile digital electronic devices, and other consumer electronics and accessories, peripherals, and carrying cases for such products, and demonstration of products relating thereto; arranging and conducting of commercial, trade and business shows and exhibitions; electronic data storage services; information, advisory and consultancy services relating to all the aforesaid.

Class 38: Telecommunications; communication and telecommunication services; communication by computer, computer intercommunication; telex, telegram and telephone services; facsimile, message collection and transmission services; transmission of data and of information by electronic means, computer, cable, radio, teleprinter, teleletter, electronic mail, telecopier, television, microwave, laser beam, communications satellite or electronic communication means; providing wireless telecommunications via electronic communications networks; electronic transmission of data and documentation via the Internet or other electronic communications networks; electronic mail services; delivery of messages by electronic transmission; wireless digital messaging, paging services, and electronic mail services, including services that enable a user to send and/or receive messages through a wireless data network; rental and hire of communication apparatus and electronic mail-boxes; electronic news services; providing online bulletin boards for the transmission of messages among computer users; telecommunication access services; providing telecommunication access to websites; providing telecommunications access and links to computer databases and directories via the Internet and other electronic communications networks; providing access to online searchable databases of text, data, image, audio, video, and multimedia content; providing telecommunication access to electronic communications networks with means of identifying, locating, grouping, distributing, and managing data and links to third-party computer servers, computer processors and computer users; providing access to social networking websites; communication services, namely, matching users for the transfer of music, video and audio recordings via communication networks; providing telecommunications access to electronic communication networks, for transmission or reception of audio, video or multimedia content; transmission of digital audio, video and multimedia content by telecommunications; electronic transmission of audio and video files via computer and other electronic communications networks; audio broadcasting; video broadcasting; broadcasting or transmission of radio and television programs; broadcasting or transmission of video content via a global computer network; streaming of video content via a global computer network; streaming of audio content via a global computer network; webcasting services; information, advisory and consultancy services relating to all the aforesaid.

Class 39: Physical storage of electronic data, text, images, audio, and video; information and consultation services in connection therewith; transportation reservation and travel ticket reservation services.

Class 41: Educational and entertainment services; sporting and cultural activities; computer-based educational, teaching, and training services; providing online computer games; electronic publishing services; providing electronic books, magazines, newspapers, journals, periodicals, and other publications; providing online text, video, audio, and multimedia programs; providing educational and entertainment information; organizing and conducting live performances, sporting events, and cultural events; organizing and conducting exhibitions, displays, exhibits, workshops, lectures, seminars, training, and conferences, but not relating to internal or external financial reporting and monitoring of financial processes in relation to business; ticket reservation and booking services for entertainment, sporting and cultural events; providing information, advice, news, reviews, and commentary in the fields of entertainment, sporting and cultural events; arranging and conducting of commercial, trade and business conferences; information, advisory and consultancy services relating to all the aforesaid.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; computer programming; design and development of computer hardware; design and development of computer software, excluding software for internal or external financial reporting and monitoring of financial processes; design, development and maintenance of proprietary computer software in the field of natural language, speech, speaker, language, voice recognition, and voice-print recognition; rental of computer hardware and software apparatus and equipment; computer hardware consulting services; computer software consulting services, excluding software for internal or external financial reporting and monitoring of financial processes; support and consultation services for developing computer systems, databases and applications; providing computer hardware or software information online; website creation, design and maintenance services; website hosting services; application service provider (ASP) services featuring hosting computer software applications of others; application service provider (ASP) services featuring software for creating, authoring, distributing, downloading, transmitting, receiving, playing, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, audio, video, and multimedia content, and electronic publications; application service provider (ASP) services featuring software for use in connection with voice recognition software and voice-enabled software applications; providing online non-downloadable software; providing search engines for obtaining data via the internet and other electronic communications networks; creating indexes of online information, sites and other resources available on global computer networks for others; digital imaging services; information, advisory and consultancy services relating to all the aforesaid.

Class 43: Hotel reservation services; restaurant reservation services; travel agency services, namely, making reservations and booking for temporary lodging; sommelier services; providing information, advice, news, reviews, and commentary in the fields of dining and accommodations for travel.

Class 45: Online social networking services; providing a social networking website; concierge services for others comprising making requested personal arrangements and reservations and providing customer-specific information to meet individual needs rendered together in business establishments, office buildings, hotels, shopping centres, residential complexes and homes.

The opposition is directed against the following goods:

Class 11: Lamps; Light-emitting diodes [LED] lighting apparatus; Fairy lights for festive decoration; Lights for vehicles; Germicidal lamps for purifying air; Cooking apparatus and installations; Refrigerating appliances and installations; Air conditioning installations; Air humid apparatus; Heating apparatus; Heating installations; Bath plumbing fixtures; Disinfectant apparatus; Purification installations for sewage.

Class 21: Containers for household or kitchen use; Cups of paper or plastic; Kitchen utensils; Glass flasks [containers]; Ceramics for household purposes; Works of art, of porcelain, terra-cotta or glass; Drinking vessels; Sprinkling devices; Combs; Toothbrushes; Toothpicks; Cosmetic utensil; Cleaning instruments, hand-operated.

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.

List of evidence

On 29/01/2018, the opponent submitted evidence in form of a witness statement, dated 25/01/2018, signed by Thomas R. La Perle, acting as Director in the opponent’s Legal Department. The witness statement and the accompanying exhibits (indexed from TLP-1 to TLP-40) provide information on the following:

The witness statement explains that the opponent company, Apple, designs, manufactures, markets and sells mobile-communication and media devices, personal computers, smartwatches, portable digital-music players, as well as a variety of software, services, accessories, networking solutions, and third-party digital content and applications. In addition, Apple offers and renders a number of services, including computer services, technology services, music and other entertainment services, advertising and/or promotional services, retail services, as well as telecommunication-related services. Examples of Apple products and services include the iPhone, iPad, Mac, iPod, Apple Watch and Apple TV devices, a portfolio of consumer and professional software applications, the iOS, mcOS, tvOS, and watchOS operating systems, Siri, iCloud, Apple Music, Apple Pay, and a variety of other accessories, services, and support in general. Apple also sells and delivers digital content and applications through Apple Music, iTunes Store, App Store, Mac App Store, and iBooks Store.

Apple designs and manufactures the popular iPhone mobile and communication media device. Apple’s iOS operating system is pre-installed on iPhone devices. Periodic updates to the iOS software are available. The latest release is iOS 11.

In the witness statement it is also explained that ‘SIRI’ software and services are offered in connection with the iOS operating system. They were introduced in 2011 with the iPhone 4S device, the iOS 5 operating system and the iCloud service. Since then ‘SIRI’ has been an integral part of the iOS operating system. Each subsequent update of the iOS operating system after iOS 5 has featured ‘SIRI’ software and availability to receive related services.

‘SIRI’ software and services were also introduced in the iPad device in autumn 2012 and with the iPod touch device in September 2012.

In conclusion, Apple incorporates the ‘SIRI’ software and services across its entire line of proprietary system software: the iOS, mcOS, tvOS, and watchOS.

Therefore consumers in the European Union have encountered the ‘SIRI’ software and services in iPhone, iPad, iPod, Apple Watch, Apple TV and Apple’s new HomePod devices, and in Mac computers.

Bearing in mind the considerable amount of evidence filed aimed at demonstrating the reputation of the earlier mark on which the opposition is based and taking into account the above mentioned dates of introduction of the ‘SIRI’ software and services in Apple devices, only the most relevant evidence will be mentioned hereunder.

Exhibits TLP-1-3: Printouts from www.forbes.com featuring an article, dated 21/08/2012, ‘Apple Now Most Valuable Company in History’; printouts from www.telegraph.co.uk containing an article, dated 20/08/2012, ‘Apple worth more than any company in history’, announcing that Apple is the most valuable company in history in terms of market capitalisation; article from Business Insider dated 08/11/2017 illustrating that Apple was valued at over USD 900 billion; article from Fortune Magazine dated 2018 where Apple is the first in the list of the World most admired company.

Exhibits TLP-4: Articles from different webpages supporting the fact that SIRI software is used in all Apple products/devices articles, such as: Apple Inc. printouts showing SIRI in Apple Tv, Apple watch, HomePod; www.macworld.co.uk dated 21/01/2018 and introduces the Siri-enabled HomePod ‘its long awaited SIRI speaker’; www.itpro.co.uk dated 24/01/2018 announcing the launch of Apple HomePod which ‘will interact with every HomeKit-enabled device, as well as every app and service that features integrations with SIRI’.

The following exhibits show ‘SIRI’ software and services in iPhone. They were introduced in 2011 with the iPhone 4S device, the iOS 5 operating system.

Exhibits TLP-5-7 and 9-18: Several Apple Press releases about ‘SIRI’ since its launch in 2011. The trade mark ‘SIRI’ is displayed in all of them: 04/10/2011 announcing the launch of iPhone 4S ‘introduces Siri intelligent assistant that helps you to get things done just asking’. Available in several EU countries; 11/06/2012 Apple previews the iOS 6. Siri available and optimized in several EU languages; Apple Press release dated 10/06/2013 Apple unveils the iOS 7. Siri available and optimized in several EU languages (English, French and German); 08/06/2015 Apple previews the iOS 9 with improved Siri features; 13/06/2016 Apple previews the iOS 10 with improved Siri features; 05/06/2017 Apple previews the iOS 11. Improved Siri features, significant updates; 17/10/2011 Apple sold over four million iPhone 4S in three days after its launch on October 14. Including Siri; 12/09/2012 Apple introduces iPhone 5 with iOS6. Siri available. Available in EU countries; 24/09/2012 Apple sold over five million iPhone 5 in three days after its launch on September 21. Including Siri. Available in EU countries; 10/09/2013 Apple announces iPhone 5. Improved Siri features. Available in EU countries; 09/10/2013 Apple announced iPhone 5s and 5c, Siri included, available in several EU countries (Italy, Spain); 10/09/2013 Apple announces iOS 7. Siri available; 09/09/2014 Apple announces iPhone 6 and 6Plus. Available in selected EU countries (in France and Germany); 13/10/2014 Apple announces iPhone 6 and 6Plus will arrive in more EU countries; 07/09/2016 Apple introduces iPhone 7 and 7Plus. Siri available. Available in EU countries; 12/09/2017 Apple announces iPhone 8 and 8Plus. Siri available. Available in EU countries; 12/09/2017 Apple announces iPhone X. Available EU in countries.

Exhibit TLP-8, 19 and 21: Several articles dated 27/01/2015 from different webpages (www. 9to5mac.com, www.idownload.com, www.cnet.com, www.computerworld.com, www.appleinsider.com) concerning the fact that Apple has sold over 1 billion iOS devices (iPhone, iPad and iPod); articles from different webpages demonstrating the great success and the sales of the iPhone device: in Hungarian without translation: dated 2012 www.hvg.hu about iPhone 4S; www.mobilarena.hu dated 2014 about iOS 8; www.szifon.com dated 2014 about iOS 8; 29/01/2015 www.ihungary.hu entitled ‘O Siri!’; in English from different web pages: 01/11/2007 www.time.com Invention of the Year: The iPhone; 10/05/2017 www.betanews.com entitled ‘Apple’s iPhone is the most popular smartphone in the world’; www.bgr.com ‘Sorry Android fans but iPhone is still the world’s most popular smartphone’; 07/03/2017 MensXP dated about the number of iPhone users in the World in 2017 – ‘we estimate total iPhone installed 715 million’; 29/06/2017 www.forbes.com ‘Apple has sold 1.2 billion iPhones over the past 10 years’; 01/08/2017 www.9to5mac.com ‘Apple announces it has now sold over 1.2 billion iPhones’.

The following exhibits show ‘SIRI’ software and services in iPad. They were introduced in autumn 2012.

Exhibit TLP-22-29: Several Apple Press releases about iPad devices and ‘SIRI’ being available for these devices from 2012 forward: 07/03/2012 Apple launches new iPad; 23/10/2012 Apple introduces iPad mini; 19/03/2012 Apple sold three million of new iPad since its launch on March 16. Available in EU countries; 11/06/2012 Apple previews iOS 6. Optimized Siri features. EU countries. Announces that ‘SIRI’ will also be available in iPads in fall 2012; 22/10/2013 Apple announced iPad Air. Improved Siri. Available in EU countries; 05/11/2012 Apple sold three million new iPads in just three days since its launch on September 21. Available in EU countries; 16/10/2014 Apple introduced iPad Air 2. Available in EU countries; 21/03/2016 Apple introduced the all-new 9.7-inch iPad Pro; 05/06/2017 Apple introduced the all-new 10.5-inch iPad Pro and new 12.9-inch iPad Pro.

The following exhibits show SIRI software and services in iPod. They were introduced in September 2012 with the iPod nano.

Exhibit TLP-30: Apple Press release dated 12/09/2012 Apple introduced the new iPod touch and iPod nano. For the first time features Siri the intelligent assistant that helps you to get things done just by asking.

Exhibit TLP-31: Several articles from different webpages about iPod devices, explaining technical improvements: **/10/2012 www.pcadvisor.co.uk iPod touch review. 5^th generation iPod touch, Siri is also on board this latest iPod, and it works just as well as it does in iPhone. And with Siri new part of the package, we are more likely than ever to talk to our iPod; 24/10/2012 www.whathifi.com Apple iPod touch (5^th gen) Siri voice control in Apple iPod touch: iOS 6; www.engadget.com iPod touch review 2012 Siri software is here; 16/07/2015 www.pcmag.com ‘A visual History of the Apple iPod’; 19/10/2016 www.lifewire.com dated The History of the iPod touch. In the 5^th generation 2012, supports Apple’s voice-activated digital assistant.

Despite the fact that the trade mark ‘SIRI’ does not appear in all the articles above listed, the evidence is still very relevant in the sense that it all refers to the devices that integrate ‘SIRI’ software and services as this is preinstalled in the hardware. Furthermore, the success of such devices (and the related trade marks) is clearly demonstrated by these materials. As will become clear, this information is also pivotal to the reputation of the mark at hand.

Exhibits TLP-20: Copies of several Forms 10-K Annual Reports as filed with the United States Securities and Exchange Commission from which it appears that the opponent’s annual sales figures in Europe, in 2016, were around USD 50 billion. They also show the Apple devices iPhone, iPad and iPod units sold.

Years	iPhone	iPad	iPod
2011	72.3 millions
2012	125 millions
2013	150.3 millions	71 millions
2014	169.2 millions	67.9 millions
2015	231.2 millions	54.8 millions
2016	211.8 millions	45.5 millions	26.4 millions
2017	216.7 millions	43.7 millions	14.4 millions

Exhibit TLP-32: Article from BBC News dated 05/05/2006 entitled ‘Apple flock worships new store 2006’ concerning the opening of the first Apple store in Europe, in London.

Exhibit TLP-33: The witness statements indicate that currently there are nearly 500 Apple Store retail locations worldwide, over 100 in the European Union: 38 in the United Kingdom, 20 in France, 16 in Italy, 15 in Germany, 11 in Spain, 3 in Sweden and the Netherlands each and one in Belgium. The average revenue per store: $50.2 million in 2013, $51.5 million in 2012 and $43.3 million in 2013 and in support of these figures provides copies of several Forms 10-K Annual Reports as filed with the United States Securities and Exchange Commission (2012, 2013).

Exhibit TLP-34: Printouts from the Apple Web page with the addresses of the different Apple retail stores in Europe (Belgium, France, Germany, Italy, Netherlands, Sweden, Spain, United Kingdom). The trade mark ‘SIRI’ is not displayed but Apple products (iPhone, iPad and iPod) featuring SIRI software can be purchased in said stores.

Exhibit TLP-36: Several articles from different webpages about the recognition of the Apple products: Top 100 most valuable global brands 2011 Apple 1^st place; 07/05/2012 TIME.com 6 reasons Apple is so successful; 10/10/2012 www.forbes.com Best products Apple ever; 08/10/2011 NBC news Why Apple is now No. 1 company in the world.

Exhibit TLP-37: Printouts from www.alexa.com (an independent web trafficking rankings undertaking) featuring a statistical summary of website traffic per region. It lists the Apple website as one of the most visited websites in the world. Evidence relating to Europe in particular shows that is at number 36 in the list of most visited websites in the United Kingdom, and in the top 100 most visited in other EU countries.

Exhibit TLP-38: Collection of images illustrating use of the iPhone and Apple trade marks on facades, billboards, underground advertisements and publicity screens of different European cities (Paris, Berlin, Frankfurt).

Exhibit TLP-39: DVD containing five TV adverts in, inter alia, English, German and French, about iPhone4s, iPhone 6 and iPhone 7. In all of them the idea that ‘SIRI’ (explicitly mentioned or not) is Apple’s intelligent assistant that ‘helps you to get things done just asking’ is repeated.

Exhibit TLP-40: Apple’s annual advertising expenditures for promoting its products and the Apple trade marks worldwide from the fiscal year 2011 to 2015 (the amounts range between 933 million of USD in 2011 and almost two billion USD in 2015). The evidence in support of these statements consists of copies of the relevant pages from Apple Inc. Form 10-K Annual Reports (2012, 2013, 2015) as filed with the United States Securities and Exchange Commission.

Assessment of the evidence

Essentially, the evidence demonstrates the worldwide success achieved by Apple and related trade marks through a selection of printouts from the opponent’s websites and press releases and articles providing information on the opponent and its products and services; press releases in relation to the launch of the opponent’s goods and services throughout the European Union and providing information on the impressive sales made thereof; printouts from Apple press info in relation to Apple products; printouts from various online articles announcing, among other things, the impressive volumes of Apple products sales.

It is noteworthy to recall that the more impartial and independent the information the higher the probative value. The opponent submitted a considerable amount of documentation from several independent sources, such as an article from Business Insider dated 08/11/2017 illustrating that Apple was valued at over USD 900 billion or an online article from www.forbes.com dated 29/06/2017 revealing that ‘Apple has sold 1.2 billion iPhones over the past 10 years’.

Trade marks owners can use a combination of their marks together and under an umbrella brand which is the case here. It is evident that Apple or iPhone trade marks are leading brands in the EU market and due to the success of Apple devices which include ‘SIRI’ software and services and their huge amount of sales, it is fair to say that ‘SIRI’, as an associated trade mark has also become increasingly prominent in each new generation of iPhones and indeed in all the new devices such as Apple watch or the latest HomePod.

Despite the fact that ‘SIRI’ trade mark does not appear as such on the devices, it is patent from the notable amount of evidence filed that it is clearly incorporated on them. Moreover, it is not a requirement that the trade mark be displayed on the goods since clearly ‘SIRI’ is used to indicate the goods concerned and their origin as evidenced. Further, an important part of the evidence submitted, as listed above, clearly refer to ‘SIRI’, such as the TV adverts, which are clear evidence of the relevant role reached by ‘SIRI’ among Apple trade marks.

It is clear from the evidence that the earlier trade mark ‘SIRI’ must also be considered well-known throughout the European Union since it has been subject to long-standing and intensive use on Apple devices (iPod, iPad and iPhone) and in connection with certain hardware and software products, and therefore is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources. The brand studies, the marketing expenditure and the international rankings which place the trade mark among the most valuable global brands (Exhibits TLP-40) , the impressive and constantly increasing number of customers (Exhibits TLP-8,19 and 21), the various references in the press to its success (Exhibits TLP 1-3 and 36), shown by the evidence all unequivocally show that the trade mark ‘SIRI’, as mark related to Apple devices, enjoys a high degree of recognition among the relevant public in connection with some of the goods in Class 9:

Computers, computer peripheral devices, computer terminals; computer hardware; microprocessors, memory boards, monitors, displays, keyboards, cables, modems, printers, disk drives, adapters, adapter cards, connectors and drivers; apparatus for data storage; hard drives; miniature hard disk drive storage units; audio video discs, CD-ROMs, and digital versatile discs; blank computer storage media; magnetic data carriers; chips, discs and tapes bearing or for recording computer programs and software; random access memory, read only memory; solid state memory apparatus; telephones; cameras, video cameras; batteries; rechargeable batteries; chargers; chargers for electric batteries; MP3 and other digital format audio players; hand held computers, tablet computers, personal digital assistants, electronic organizers, electronic notepads; handheld digital electronic devices and software related thereto; handheld and mobile digital electronic devices for the sending and receiving of telephone calls, faxes, electronic mail, and other digital data; handheld digital electronic devices and software related thereto; electronic handheld units for the wireless receipt, storage and/or transmission of data and messages, and electronic devices that enable the user to keep track of or manage personal information; electronic communication equipment and instruments; telecommunications apparatus and instruments; telephone-based information retrieval software and hardware; mobile digital electronic devices for the sending and receiving of telephone calls, faxes, electronic mail, video, instant messaging, music, audiovisual and other multimedia works, and other digital data; global positioning system (GPS) devices; telephones, mobile telephones, video phones; parts and accessories for mobile telephones; voice recognition apparatus; digital voice recorders; wireless communication devices for voice, data or image transmission; earphones, headphones; audio speakers; sound recording and reproducing apparatus, amplifiers, electric phonographs, reproducing apparatus, microphones; digital audio and video recorders and players; video cassette recorders and players, compact disc recorders and players, digital versatile disc recorders and players, digital audio tape recorders and players; radios; radio transmitters and receivers; audio, video, and digital mixers; computer software; computer software for creating, authoring, distributing, downloading, transmitting, receiving, playing, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, audio, video, and multimedia content, and electronic publications; operating system software, data synchronization software, application development software; computer software for personal information management; database management software; database synchronization software; character recognition software; voice recognition software; speech to text conversion software; voice-enabled software applications; telephony management software; electronic mail and messaging software; mobile telephone software; computer software for accessing, browsing and searching online databases; computer software for the redirection of messages, Internet e-mail, and/or other data to one or more electronic handheld devices from a data store on or associated with a personal computer or a server; computer software for the synchronization of data between a remote station or device and a fixed or remote station or device; downloadable electronic publications; computer equipment for use with all of the aforesaid goods; electronic communications apparatus with multimedia functions for use with all of the aforesaid goods; electronic communications apparatus with interactive functions for use with all of the aforesaid goods;

However, the evidence exclusively relates to the above mentioned goods whereas there is no reference to the following goods in Class 9:

Mouse pads; facsimile machines, answering machines; record players, high fidelity stereo apparatus, tape recorders; audio cassette recorders and players; car audio apparatus; computer games; fonts, typefaces, type designs and symbols in the form of recorded data; user manuals in electronically readable, machine readable or computer readable form for use with, and sold as a unit with, all the aforementioned goods; accessories, parts, fittings, and testing apparatus for all of the aforesaid goods; covers, bags and cases adapted or shaped to contain all of the aforesaid goods.

There is also no evidence whatsoever concerning the remaining goods and services in Classes 28, 35, 38, 39, 41, 42, 43 and 45. Consequently, since it does not succeed in establishing that the earlier mark ‘SIRI’ has a reputation for all of the goods and services for which reputation is claimed, the opposition will proceed purely on the basis of the listing above.

b) The signs

SIRI

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 earlier sign consists of the word ‘SIRI’ which is meaningless for the majority of the relevant territory. However, in certain territories, such as Denmark or Sweden, this word, could be perceived as a female given name. In any event, whether or not this verbal element has a meaning, it is distinctive to an average degree, since the potential meaning has no direct link with the relevant goods and services.

The contested sign is a figurative mark consisting of the meaningless word ‘suria’ in standard black lower case typing letters. The word element is distinctive for the relevant goods whereas the letters stylisation is purely decorative and therefore, non-distinctive.

Visually, the signs coincide in three out of the five letters in the same order, ‘S*RI*’ They differ in the second letters of the signs, respectively ‘I’ and ‘U’, and the additional fifth letter in the contested sign, namely ‘A’, that has no counterpart in the earlier mark.

The signs also differ in the stylisation of the contested mark, which have no counterparts in the earlier sign but which, as explained above, is non-distinctive.

Therefore the signs are visually similar to a low degree since they coincide in the first letters, which is the part with greatest impact, and also because substantial parts of the earlier mark are reproduced in the contested sign, namely three out of its four letters.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘S*RI*’, present identically in both signs. The pronunciation differs in the sound of the vowel of the first syllable, ’I’ in the earlier sign and ‘U’ in the contested sign, and in the additional final letter ‘A’ of the contested mark.

It is worth noting that the opponent relied on an expert in phonetics to refute the applicant’s assertions on the phonetic dissimilarity between the signs. Whilst considering the opposing stance of the parties, the Opposition Division maintains its contentions and finds the signs similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public that perceives ‘SIRI’ as a female given name the signs are conceptually not similar.

For the rest of the relevant public, neither of the signs has a meaning therefore, a conceptual comparison is not possible. For said part of the public the conceptual aspect does not influence the assessment of the similarity of the signs.

In any case the opponent’s conclusion about the conceptual similarity of the signs, namely, that the ‘strong visual and aural similarities’ between the signs ‘renders the two marks conceptually highly similar if not identical’, is not correct.

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

c) The ‘link’ between the signs

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

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

 the degree of similarity between the signs;

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

 the strength of the earlier mark’s reputation;

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

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

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

The establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

According to the Court of Justice of the European Union,

It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 48.)

The Court of Justice has also noted,

… that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 51‑52.)

In the present case, the signs are visually and aurally similar to a low degree, as they coincide in three out of four and five letters, and conceptually the signs are not similar or neutral, depending on the relevant public.

The earlier mark is inherently distinctive for the relevant goods and services and, moreover, the opponent has proven that it has gained a reputation in the European Union for part of the goods and services, namely, for part of the goods in Class 9.

Another factor to consider when assessing whether there is a ‘link’ between the signs are the relevant goods.

The contested goods are the following:

The goods for which registration is sought in Class 9 consist of different electronic and IT devices, which are similar or identical to the opponent’s goods in Class 9 for which reputation has been claimed. They have the same nature and purpose, target the same public, and are often offered by the same companies.

Therefore, taking into account that the signs share a certain degree of similarity and weighing up all the relevant factors of the present case, the Opposition Division concludes that, when encountering the contested mark, at least in relation to the contested goods in Class 9, 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).

As to the remaining goods for which registration is sought in Classes 11 and 21, the Opposition Division considers that, while the relevant section of the public for the goods or services covered by the conflicting marks is the same or overlaps to some extent, the remaining contested goods are so different that the later mark is unlikely to bring the earlier mark to the mind of the relevant public.

The contested goods in Class 11 are lighting apparatus and others being for ‘environmental control’ in the sense that they change the surrounding environment, for example, by heating, cooling, drying, purifying or disinfecting air or water. Consequently, Class 11 includes heating, ventilating, air-conditioning and air purification equipment, sanitary installations, water supply and water treatment installations, as well as apparatus for cooking.

The contested goods in Class 21 are mainly containers and small hand-operated utensils and apparatus for household and kitchen use.

These goods are produced by different companies, have different distribution channels and satisfy needs completely different to the ones covered by the goods and services of the earlier trade mark.

Taking into account the very different nature of the goods, it is unlikely that, when intending to purchase the contested goods in Classes 11 and 21, the relevant public would link them to a designation of origin that has a reputation for IT goods and services. The degree of the earlier mark’s reputation in the European Union demonstrated by the opponent does not imply that it is of such a strength that it could produce effects beyond the relevant market sectors and trigger a link between signs that are similar in completely different areas of the economy, such as the abovementioned sectors.

As consumers will not make the necessary mental association between the contested sign and the earlier mark, any link is unlikely to be formed in the context of goods in Classes 11 and 21.

While the fact that the trade marks share the majority of the letters is sufficient to trigger a link between the marks in relation to identical and similar goods, considering the proven reputation of the earlier mark. This similarity between the signs is not enough in relation to the dissimilar goods.

Taking into account and weighing up all the relevant factors of the present case, the Opposition Division thus concludes that, when encountering the contested mark in the context of the goods applied for in Class 9, the relevant consumer is likely to associate it with the earlier mark, that is to say, establish a mental ‘link’ between the signs.

In contrast, when confronted with the contested mark in the context of the goods applied for in the remaining classes, it is unlikely that the relevant public will make such a mental connection between the signs.

For the sake of completeness, the Opposition Division notes that the opponent has not submitted evidence, or at least put forward a coherent line of argument, demonstrating why the relevant public would make a link nor what the detriment, or unfair advantage, would consist of, and how it would occur in relation to the contested goods in Classes 11 and 21, which could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

For the goods in Class 9, 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).

d) Risk of injury

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

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

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

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

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

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

The opponent essentially claims the following:

 The applicant’s use of the contested sign would take unfair advantage of the substantial reputation of the earlier mark. The degree of similarity between the signs is sufficient to create a link between the marks in the minds of the relevant public and by choosing the contested sign, the applicant will benefit from the attraction and repute of the opponent’s mark, ‘associating itself with the Opponent’s history, innovation, skill, marketing, efforts and investment’.

 The use of the contested sign could cause significant detriment to the distinctiveness of the earlier mark. This harm would occur because the use of the contested sign serves to diminish the distinctive character of the earlier mark, ‘SIRI would become part of a multitude of similar marks containing minor variations which do not clearly distinguish it from the earlier marks’. The public’s perception that the contested sign is connected or associated with the opponent would damage the capacity of the earlier trade mark to immediately distinguish goods and services originating from the opponent.

 The opponent has invested considerable time and expense in creating and maintaining its reputation as a famous brand that enjoys worldwide acclaim. Furthermore, the opponent’s earlier mark holds a strong reputation and high quality products. However, in finding that goods provided under the contested sign originate not from the opponent, but from the applicant, consumers are likely to be deceived as to the quality of those goods, as they are unlikely to be of the same standard as the opponent’s products. Therefore, the use of the contested sign with potentially inferior goods will tarnish and blur the positive image of the opponent and its trade mark.

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.

 The applicant’s use of the contested sign would take advantage of the substantial reputation subsisting in the earlier trade mark, ‘SIRI’. Consumers who draw a connection between the contested sign and the earlier mark will be predisposed to assume that the contested goods originate directly from Apple and bear similar attributes including in terms of innovation, quality and functionality.

 The adoption and use of a similar sign will reinforce the connection with the opponent and its ‘lifestyle’ brand.

 For these reasons, the applicant will gain commercial advantage over its competitors in the marketplace by trading upon the image and reputation of the opponent’s respected ‘SIRI’ and the positive characteristics which it projects. However, that advantage would not be derived from the applicant’s own marketing efforts, investment, skill, and innovation. Rather, it would be derived from its use of a mark similar to the opponent’s.

 Use of the contested sign derives an unfair and unjustifiable benefit from the reputation earned and enjoyed by the opponent as a result of its efforts in successfully marketing and developing ‘SIRI’ trade mark.

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.)

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, in relation to the goods for which a reputation has been found and taking into account the somewhat low, yet existing similarity between the signs, there exists a probability that the use without due cause of the contested sign in respect of the contested goods in Class 9 may acquire some unearned benefit and lead to free-riding, that is to say, it would take unfair advantage of the distinctive character and the repute of the earlier trade mark.

However, as seen above in the previous section on risk of injury, as there will be no link between the contested goods in Classes 11 and 21 and the goods for which the earlier mark gained reputation, there is no likelihood that the contested mark would take unfair advantage of the distinctive character or repute of the earlier mark in relation to these goods.

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.

e) Conclusion on Article 8(5) EUTMR

Considering all the above, the opposition is partially well founded under Article 8(5) EUTMR insofar as it is directed against the following goods:

Class 9: Humanoid robot with artificial intelligence; Smart watches (data processing); Downloadable mobile applications; Virtual reality game software; Smart phone shells; Smart phone cases; Smartphones; Protective film for mobile phone screen; Headsets; Camcorders; Cameras; Electric wires; Plugs, sockets and other contacts [electric connections]; Portable power supply (rechargeable batteries); Batteries.

Therefore, the contested trade mark must be rejected for all the contested goods in Class 9.

However, the opposition under Article 8(5) EUTMR is not successful insofar as the goods in Classes 11 and 21 are concerned.

Given that the opposition is only partially successful under Article 8(5) EUTMR, it is necessary to examine the remaining grounds on which the opposition is based.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

The opponent has also based its opposition under Article 8(1) (b) EUTMR on the European Union earlier trade mark registration No 10 569 259 for the word mark ‘SIRI’.

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion.

As explained already, the contested goods in Class 11 consist of a variety of lighting, cooking, heating, cooling, drying, purifying or disinfecting air or water apparatus and in Class 21 of a variety of containers and small hand-operated utensils and apparatus for household and kitchen use, while the opponent’s goods and services consist of IT goods and services.

The contested goods thus clearly differ in nature and purpose from the opponent’s goods and services. In addition, these goods do not follow the same method of use as the opponent’s goods and services, these goods and services usually come from different undertakings. They are obviously not in competition and they are not complementary either. Therefore, these goods are dissimilar to all the opponent’s goods and services.

Since the contested goods in Classes 11 and 21 are clearly dissimilar to the opponent’s goods and services, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition laid down in that ground must be rejected.

The well known mark – Article 8(1)(b) EUTRM in conjunction with Article 8(2)(c) EUTMR

The opponent invoked ‘SIRI’ as a well-known trade word mark in Estonia, Netherlands, Czech Republic, Denmark, United Kingdom, Hungary, Poland, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Slovenia, Finland, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and Ireland for the following goods and services:

Class 7: Dishwashers.

Class 9: Computers, computer peripheral devices, computer terminals; computer hardware; microprocessors, memory boards, monitors, displays, keyboards, cables, modems, printers, disk drives, adapters, adapter cards, connectors and drivers; apparatus for data storage; hard drives; miniature hard disk drive storage units; audio video discs, CD-ROMs, and digital versatile discs; blank computer storage media; magnetic data carriers; chips, discs and tapes bearing or for recording computer programs and software; random access memory, read only memory; solid state memory apparatus; mouse pads; telephones; facsimile machines, answering machines; cameras, video cameras; batteries; rechargeable batteries; chargers; chargers for electric batteries; MP3 and other digital format audio players; hand held computers, tablet computers, personal digital assistants, electronic organizers, electronic notepads; handheld digital electronic devices and software related thereto; handheld and mobile digital electronic devices for the sending and receiving of telephone calls, faxes, electronic mail, and other digital data; handheld digital electronic devices and software related thereto; electronic handheld units for the wireless receipt, storage and/or transmission of data and messages, and electronic devices that enable the user to keep track of or manage personal information; electronic communication equipment and instruments; telecommunications apparatus and instruments; telephone-based information retrieval software and hardware; mobile digital electronic devices for the sending and receiving of telephone calls, faxes, electronic mail, video, instant messaging, music, audiovisual and other multimedia works, and other digital data; global positioning system (GPS) devices; telephones, mobile telephones, video phones; parts and accessories for mobile telephones; voice recognition apparatus; digital voice recorders; wireless communication devices for voice, data or image transmission; earphones, headphones; audio speakers; sound recording and reproducing apparatus, amplifiers, electric phonographs, record players, high fidelity stereo apparatus, tape recorders and reproducing apparatus, microphones; digital audio and video recorders and players; audio cassette recorders and players, video cassette recorders and players, compact disc recorders and players, digital versatile disc recorders and players, digital audio tape recorders and players; radios; radio transmitters and receivers; audio, video, and digital mixers; car audio apparatus; computer software; computer games; computer software for creating, authoring, distributing, downloading, transmitting, receiving, playing, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, audio, video, and multimedia content, and electronic publications; operating system software, data synchronization software, application development software; computer software for personal information management; database management software; database synchronization software; character recognition software; voice recognition software; speech to text conversion software; voice-enabled software applications; telephony management software; electronic mail and messaging software; mobile telephone software; computer software for accessing, browsing and searching online databases; computer software for the redirection of messages, Internet e-mail, and/or other data to one or more electronic handheld devices from a data store on or associated with a personal computer or a server; computer software for the synchronization of data between a remote station or device and a fixed or remote station or device; downloadable electronic publications; fonts, typefaces, type designs and symbols in the form of recorded data; user manuals in electronically readable, machine readable or computer readable form for use with, and sold as a unit with, all the aforementioned goods; computer equipment for use with all of the aforesaid goods; electronic communications apparatus with multimedia functions for use with all of the aforesaid goods; electronic communications apparatus with interactive functions for use with all of the aforesaid goods; accessories, parts, fittings, and testing apparatus for all of the aforesaid goods; covers, bags and cases adapted or shaped to contain all of the aforesaid goods. Smart watches; wearable activity trackers; connected bracelets [measuring instruments]; smart glasses; Alarms, alarm sensors, and alarm monitoring systems; residential security and surveillance systems; smoke and carbon monoxide detectors; thermostats, monitors, sensors, and controls for air conditioning, heating, and ventilation devices and systems; electric and electronic door and window locks and latches; remote controls for opening and closing garage door; remote controls and openers; curtain, drape, window shade, and window blind remote controls and openers; lighting controls; electrical outlets; electrical and electronic switches; dictating machines; wearable computer peripherals; wearable computer hardware; peripherals for mobile devices; wearable digital electronic devices capable of providing access to the internet, for sending, receiving and storing of telephone calls, electronic mail, and other digital data; media players, audio speakers, telephone apparatus, telecommunication devices, and computers for use in motor vehicles; navigational instruments and devices; televisions; television receivers; television monitors; set top boxes; remote control apparatus; computer hardware, computer peripherals, handheld digital electronic devices, and remote control devices for controlling the operations of televisions, video monitors, set top boxes, audio, video, and media players and recorders, game players, entertainment systems, home theatre systems, home automation hubs, and consumer electronic devices and displays; computer hardware, computer peripherals, handheld digital electronic devices, and remote control devices for controlling software applications and for searching, manipulating, controlling, storing, displaying, playing, and recording audio, video, and multimedia content, games, software applications, software application marketplaces, and program listings and guides.

Class 11: Apparatus for lighting, heating, cooling, air conditioning, humidifying, dehumidifying, ventilating, cooking, refrigerating, washing, drying, plumbing, water supply, and sanitary purposes; light bulbs, lighting fixtures, and lamps; furnaces, heaters, water heaters, humidifiers, dehumidifiers, air conditioners, electric fans, and fireplaces; cooking ovens, stoves, ranges, and toasters; refrigerators and freezers; laundry washers and dryers; hot tubs, bathtubs, showers, and sinks, and fixtures for the foregoing.

Class 14: Horological and chronometric instruments; watches; timepieces; chronographs for use as timepieces; chronometers.

Class 36: Financial services; financial transaction services; bill payment services; providing secure commercial transactions; debit and credit card services, electronic payment services.

When an opposition is based on a well-known mark within the meaning of Article 8(2)(c) EUTMR, the opposing party must submit evidence showing that this mark is well known in the relevant territory.

In practical terms, the threshold for establishing whether a trade mark is well-known in the sense of Article 6bis of the Paris Convention or enjoys reputation will usually be the same given the substantial overlap between these terms, as shown by a comparison of the way well-known marks are defined in the WIPO Recommendations with the way reputation was described by the Court in its judgment of 14/09/1999, C-375/97, 'General Motors', § 22 (which concludes that the different terminology is merely a 'nuance, which does not entail any real contradiction').

As explained above, the evidence submitted by the opponent (and examined under Article 8(5) EUTMR) shows that ‘SIRI’ has acquired reputation only in relation to some of the goods in Class 9.

Therefore, the outcome of the assessment of the earlier well-known mark cannot be different. The opponent has not shown that its earlier trade mark has become well-known in the relevant territory for the remaining goods and services in Classes 7, 11, 14, 28, 35, 36, 38, 39, 41, 42, 43 and 45 on which the opposition is based, and therefore the opposition must also be rejected to the extent it is based on this well-known mark for said goods and services. Failure to comply with this requisite makes it unnecessary to examine any further on this basis.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

The opponent also based its opposition on the earlier non-registered word mark ‘SIRI’ as used in the course of trade in Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Croatia, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United Kingdom for apparatus for recording, transmission and/or reproduction of sound or images or other data; processing equipment; downloadable audio and video recordings featuring music, comedy, drama, action, adventure and /or animation; computers, tablet computers, computer terminals, computer peripheral devices; computer hardware; computer software; computer networks; computer gaming machines; microprocessors, memory boards, monitors, displays, keyboards, cables, modems, printers, videophones, disk drives; central processing units; circuit boards; integrated circuits; magnetic, optical, and electronic data storage materials and devices; computer memory devices; blank computer storage media; solid-state data storage devices; speakers for computers; radio receivers, amplifiers, sound recording and reproducing apparatus, mobile telephones; parts and accessories for mobile telephones; portable digital electronic devices for data processing, information processing, storing and displaying data, transmitting and receiving data, transmission of data between computers, and software related thereto; handheld digital electronic devices for data processing, information processing, storing and displaying data, transmitting and receiving data, transmission of data between computers, and software related thereto; digital music and/or video players; Advertising; business management; business administration; office functions; providing office functions; business consulting services; advertising agency services; arranging and conducting of commercial, trade and business conferences, shows, and exhibitions; creating indexes of online information, sites and other resources available on global computer networks for others; providing business and commercial information over computer networks and global communication networks; business services, namely, providing computer databases regarding the purchase and sale of a wide variety of products and services of others; business services, namely, dissemination of advertising for others via computer networks and global communication networks; compilations of directories for publishing on the Internet and other electronic, computer and communications networks; computerised database and file management; data processing services; retail store featuring computer, electronic and entertainment products; retail store and online store services featuring computer, electronic and entertainment products provided via the Internet and other computer, electronic and communications networks; retail store and online store services in the field of computers, tablet computers, computer hardware, computer software, computer peripherals, consumer electronics, telecommunications and multimedia goods and accessories, mobile phone, handheld mobile digital electronic devices, and other consumer electronics and accessories, peripherals, and carrying cases for such products, and demonstration of products relating thereto; retail store services in the field of computers, tablet computers, computer hardware, computer software, computer peripherals, consumer electronics, telecommunications and multimedia goods and accessories, mobile phone, handheld mobile digital electronic devices, and other consumer electronics and accessories, peripherals, and carrying cases for such products, and demonstration of products relating thereto, provided via the Internet and other computer, electronic and communications networks; Telecommunications; communication and telecommunication services; telecommunication access services; communications by computer; communications by tablet computer; communication between computers; electronic sending of data and documentation via the Internet or other databases; supply of data and news by electronic transmission; providing access to websites and electronic news services online allowing the download of information and data; providing access to web sites on the Internet; serving and transmitting audio, video, multimedia, and advertising content to computers, mobile telephones, media players, and other mobile digital devices; delivery of digital music by telecommunications; Scientific and technological services in the fields of computer hardware, computer software, computer peripherals, portable and/or electronic devices, communications and information technology and research and design relating thereto; industrial analysis and research services in the fields of computer hardware, computer software, computer peripherals, portable and/or electronic devices, communications and information technology ; design and development of computer hardware and software; computer hardware and software consulting services; technical support services, namely, troubleshooting computer hardware, computer peripheral, computer software and consumer electronic devices.

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.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

 the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

 pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

 the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

a) The right under the applicable law

In relation to Article 8(4) EUTMR, the opponent invoked the Austrian, Belgian, Bulgarian, Cypriot, Czech, Danish, Estonian, Finnish, French, German, Greek, Croatian, Hungarian, Irish, Italian, Latvian, Lithuanian, Luxembourgish, Maltese, Dutch, Polish, Portuguese, Romanian, Slovak, Slovene, Spanish, Swedish, United Kingdom non-registered trade mark ‘SIRI’, covering a range of goods and services/activities as listed above.

In the notice of opposition the opponent submits that the contested application should be refused under the national laws of all Member States of the EU which confer the right to prohibit the use of the contested sign and invokes the following:

Passing off and Section 5(4) TMA 1994 (in the United Kingdom);

Passing off and Section 10(4)(a) TMA 1996 (in the Republic of Ireland);

Section 31 Markenschutzgesetz 1970 (MG) as last amended by law of 1999

(in Austria);

Article 12B Uniform Benelux Law on Marks and Article 93 de la loi du 14 juillet

1991 sur les pratiques du commerce et sur I’information et la protection du

consommateur (in Belgium);

Decision on Opposition No B 2 790 908 page: 14 of 19

Article 7(1)(g) TML (in the Czech Republic);

Section 15(4)(ii) TMA (in Denmark);

Sections 1, 2 (3), 6, 14 (6) TML (in Finland);

Article 711-4(b) and (c) CPI (in France);

Sections 4(2), 12, 14 and 14 (2) MG (in Germany);

Article 4(3)(a) of TML 2239/1994 and Article 13(1) Law 146/1914 on Unfair

Competition (in Greece);

Article 5(2)(a) (in Hungary);

Article 12(1)(b) and Article 25(1)(a) Codice Proprietà Industriale (in Italy);

Article 4(4), (7) TML (in Latvia);

Article 12B Uniform Benelux Law on Marks and Article 17 alinéa f, de la loi du

27 November 1986 réglementant certaines pratiques commerciales et

sanctionnant la concurrence déloyale (in Luxembourg);

Article 6(4)(a) TML (in Malta);

Article 12B Uniform Benelux Law on Marks and Law of 5 July 1921 on trade

names and Article 6:612 of Dutch Civil Code (in Netherlands);

Article 191 and Article 33(1)(b), PT Industrial Property Code (in Portugal);

Article 4(d) TML (in Slovakia);

Article 3(2), Ley de Marcas (in Spain);

Sections 1, 2(1), 2(3), 6, 14(6) Swedish Trade Mark Act (in Sweden);

Chapter 2 Section 6 (e) Law on Trade Marks and Geographical Indications

No.84-1998 (Romania);

Article 12 Law on Marks and Geographical Indications (Bulgaria).

The Opposition Division notes from the outset that, neither in the notice of opposition nor in the further facts, evidence and arguments, does the opponent submit any reference to the national laws of the above mentioned Member States invoked as territories where the opponent claims to have a non-registered trade mark.

In the further facts, evidence and arguments, the opponent just relies on the common law tort of passing-off, available in the United Kingdom. The opponent submitted arguments and references to case-law, in relation to this right invoked under the laws in the United Kingdom.

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

According to Article 7(2)(d) EUTMDR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide, inter alia, evidence of its acquisition, continued existence and scope of protection, including where the earlier right is invoked pursuant to the law of a Member State, a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C‑263/09 P, Elio Fiorucci, EU:C:2011:452, § 50).

The information on the applicable law must allow the Office to understand and apply the content of that law, the conditions for obtaining protection and the scope of this protection, and allow the applicant to exercise the right of defence.

As regards the provisions of the applicable law, the opponent must provide a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence (Article 7(2)(d) EUTMDR). The opponent must provide the reference to the relevant legal provision (Article number and the number and title of the law) and the content (text) of the legal provision by adducing publications of the relevant provisions or jurisprudence (e.g. excerpts from an official journal, a legal commentary, legal encyclopaedias or court decisions). If the relevant provision refers to a further provision of law, this must also be provided to enable the applicant and the Office to understand the full meaning of the provision invoked and to determine the possible relevance of this further provision. Where the evidence concerning the content of the relevant national law is accessible online from a source recognised by the Office, the opponent may provide such evidence by making a reference to that source (Article 7(3) EUTMDR).

According to Article 7(4) EUTMDR, any provisions of the applicable national law governing the acquisition of rights and their scope of protection as referred to in Article 7(2)(d) EUTMDR, including evidence accessible online as referred to in Article 7(3) EUTMDR must be in the language of the proceedings or accompanied by a translation into that language. The translation must be submitted by the opposing party of its own motion within the time limit specified for submitting the original document.

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

Where the opponent relies on national case-law to prove its case, it must also provide the Office with the relevant case-law in sufficient detail and not merely by reference to a publication somewhere in the legal literature.

In the present case, the opponent did not submit sufficient information, or any at all, on the legal protection granted to Austrian, Belgian, Bulgarian, Cypriot, Czech, Danish, Estonian, Finnish, French, German, Greek, Croatian, Hungarian, Irish, Italian, Latvian, Lithuanian, Luxembourgish, Maltese, Dutch, Polish, Portuguese, Romanian, Slovak, Slovene, Spanish or Swedish non-registered trade mark. The opponent did not submit any information as to the possible content of the rights invoked, nor the conditions to be fulfilled in order for the opponent to be able to prohibit the use of the contested trade mark under the laws in each of the abovementioned Member States.

Consequently, in relation to the non-registered trade mark invoked in the abovementioned Member States, the opposition is not well founded under Article 8(4) EUTMR.

The examination of the opposition continues in relation to the non-registered trade mark under the laws of the United Kingdom.

-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 mark. 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 goods originate from the opponent. In other words, the public would be likely to believe that goods 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 mark.

b) The opponent’s right vis-à-vis the contested trade mark

The opponent must demonstrate that the applicant’s mark would be likely to lead the public to believe that the applicant’s goods originate from the opponent.

The contested trade mark must be likely to lead the public to believe that goods to be offered by the applicant are the opponent’s goods or services. Therefore, it is necessary to examine whether, on a balance of probabilities, it is likely that a substantial part of the relevant public will be misled into purchasing the applicant’s goods in the belief that they are the opponent’s.

In that connection, it is noted that the public is unlikely to be misled where the contested goods are dissimilar to those upon which the opponent’s goodwill has been built. Therefore, the contested goods must be compared with the goods and services for which the opponent has shown that it has acquired goodwill through use.

As apparent from the findings made above under the grounds of Article 8(5) EUTMR and Article 8(1)(b) EUTMR, to which reference is made, the goods applied for in Class 11 consist of a variety of lighting, cooking, heating, cooling, drying, purifying or disinfecting air or water apparatus and in Class 21 a variety of containers and small hand-operated utensils and apparatus for household and kitchen use which have nothing in common with the IT goods and services.

As seen above, indeed, these goods clearly differ in nature and purpose. In addition, they do not follow the same method of use nor come from different undertakings. They are obviously not in competition and neither are they complementary.

Therefore, these contested goods are dissimilar to IT goods and services for which the opponent is deemed to have acquired goodwill through use. There is nothing that would link these goods from the point of view of their nature, method of use, purpose of use, usual commercial origin or usual sales outlets. The goods furthermore, are neither complementary nor in competition.

It is worth noting that for a successful passing-off action, there must be misrepresentation. As indicated above, this refers to the notion of consumers being deceived into thinking that the contested goods are in fact those of the opponent (Reckitt and Colman v Borden [1990] RPC 341). The more remote the respective fields of activity are, the less likely it is that misrepresentation will arise. Though there is no need to necessarily operate in a ‘common field of activity’ as that of the opponent since misrepresentation could still arise in certain circumstances, even if the goods and/or services at issue, as in the present case, were completely different. This may occur where the goodwill under the relevant sign is of such extent that using it in relation to any good or service will lead to a deception as to origin. This point has been examined in a recent decision of the Boards of Appeal in an analogous case (21/03/2016, R736/2015-5, DEEP PURPLE / DEEP PURPLE, § 29 et ss., and case law cited therein, confirmed by 04/10/2018, T-328/16, DEEP PURPLE, EU:T:2018:649).

Reference is made to previous reasoning in this decision concerning the lack of connection between the goods in dispute, even in view of the reputation that the earlier mark has in connection with goods in Class 9 (see reasoning under Article 8(5) EUTMR). That reasoning and conclusion is also applicable here to the extent that the goods are far-removed and there is no market reality that would lead consumers to believe the contested goods are those of the opponent. As held in Harrods Limited v Harrodian School Limited [1996] EWCA CIV 1315, ‘the name “Harrods” may be universally recognised, but the business with which it is associated in the minds of the public is not all-embracing. To be known to everyone is not to be known for everything’ (21/03/2016, R736/2015-5, DEEP PURPLE / DEEP PURPLE, §39 and case law cited therein).

Under these circumstances, the Opposition Division finds it unlikely that the opponent’s customers would mistake the applicant’s goods for those of the opponent even if the signs are similar. Therefore, as one of the criteria under the relevant national law is not fulfilled, the opposition, as based on this ground must be rejected as not well founded under Article 8(4) EUTMR.

c) Final Conclusion

The opposition is partially upheld in relation to the goods in Class 9 and the contested application must be rejected for these goods.

However, the opposition is rejected in relation to the remaining contested goods, namely, those in Classes 11 and 21 and the contested mark may proceed to registration for these goods.

COSTS

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

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Vanessa PAGE

Sofia SACRISTAN MARTINEZ

Tu Nhi VAN

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.

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