OPPOSITION No B 2 993 965

Banco de Investimento Global S.A. (BIG), Edifício BiG, Avenida 24 de Julho nº 74-76, 1200 869 Lisboa, Portugal (opponent), represented by Nuno Lucas, Rua Duque de Palmela 27 - 5º Esq., 1250-097 Lisboa, Portugal (professional representative)

a g a i n s t

Banco Bic Português S.A., Av. António Augusto de Aguiar nº 132, 1050-020 Lisboa, Portugal (applicant), represented by Pedro Sousa e Silva, Avenida da Boavista 2300, 2º, 4100-353 Porto, Portugal (professional representative).

On 15/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 993 965 is partially upheld, namely for the following contested goods and services:

Class 9: Encoded credit and debit cards, magnetic, and encoded cards, magnetic, for banking operations.

Class 36: Insurance; Monetary affairs; real estate affairs; financial services including those provided via the internet or other means of telecommunications; banking; information and consultancy relating to financial affairs and banking.

2. European Union trade mark application No 16 911 901 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 911 90101 . The opposition is based on European Union trade mark registrations No 4 949 871 , No 14 016 547 and No 14 018 774 as well as on Portuguese trade mark registrations No 516 848 and No 446 934, both for ‘BANCO BIG’ for which the opponent invoked both Article 8(1)(a) and (b) and Article 8(5) EUTMR. The opposition is also based on Portuguese trade mark registration No 512 902 for which the opponent only invoked Article 8(1)(a) and (b) EUTMR.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Portuguese trade mark registration No 512 902 .

1. The goods and services

The services on which the opposition is based are the following:

Class 36: Real estate administration; management of real estate and housing; real estate administration; real estate management; credit agencies; leasing rental-purchasing services; rental collection; financial analysis; financial evaluations [insurance, banks, immovable]; banking business; direct bank [homebanking]; brokerage; cushions in the bag; exchange operations; constitution of capital; credit cards services; debit cards services; guarantees [cautions]; issuance of travel checks; check vehicle; deposits in cofres-fortes; placement of funds; compensation operations [exchange]; financial consulting; deposit of securities; issuance of credit cards; issuance of travel checks; issue of orders of payment of values; loans [finance]; loans on penhores; fiduciary services; financial information; banking business; financing services; electronic transfer of funds; capital investment; supply of information related to financial and monetary business; financial, monetary and real estate operations; financial sponsorship; management of heritages; bank savings services.

The contested goods and services are the following:

Class 9: Encoded credit and debit cards, magnetic, and encoded cards, magnetic, for banking operations; Computer communication software to allow customers to access bank account information and transact bank business.

Class 16: Paper, cardboard and goods made from these materials, in relation to financial activities, not included in other classes; Printed matter; Credit cards, not magnetic; Printed matter, namely cards for use in banking transactions; Periodical magazines; Periodical publications.

Class 35: Advertising in relation to banking and financial services; Business management.

Class 36: Insurance; Monetary affairs; Real estate affairs; Financial services including those provided via the internet or other means of telecommunications; Banking; Information and consultancy relating to financial affairs and banking.

Class 38: Telecommunications and electronic transmission relating to financial affairs.

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

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

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

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

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

Contested goods in Class 9

The contested encoded credit and debit cards, magnetic, and encoded cards, magnetic, for banking operations are similar to the opponent’s financing services including those provided via the internet or other means of telecommunications as they have the same purpose and they usually coincide in producer, relevant public and distribution channels. Furthermore they are complementary.

The contested computer communication software to allow customers to access bank account information and transact bank business is dissimilar to the opponent’s services in Class 36. Indeed, although many financial services are rendered with the use of software, for instance online banking platforms, such software is an integral part of the financial services themselves and is not sold independently from them and financial companies or institutions are normally not engaged in the development of highly specialised software. Rather they would outsource the development of such software to IT companies. These goods and services are clearly provided by different companies with expertise in completely different areas, and at the same time targeting different users, which rules out any complementary relationship. Besides, taking into account that by nature goods are different from services, they neither coincide in their purpose, method of use or channels of distribution.

Contested goods in Class 16

The contested goods in Class 16 are essentially printed matters that have no relevant commonalities with the opponent’s services in Class 36. The mere fact that some of the contested printed matter, for example, can have financial and investment services as its subject matter is not a relevant factor for finding similarity. The differences in the natures and purposes of these goods and services are vast. The same applies also to their usual origins and distribution channels. Furthermore, they are neither complementary nor in competition. The mere fact that the goods and services in question can be directed at the same public is insufficient in itself to support a finding of similarity. As far as the contested credit cards, not magnetic are concerned, it is worth clarifying that the nature of the credit cards in Class 16 is different from the nature of credit cards in Class 9 since they are not encoded and are directed at a professional public, namely manufacturers of encoded credit cards, and not at the end users of the financial services as opposed to the encoded credit cards in Class 9. Therefore, all of the contested goods in Class 16 are dissimilar to the opponent’s services in Class 36.

Contested services in Class 35

The contested advertising in relation to banking and financial services; business management are services that aim at supporting or helping other businesses to carry out or improve their business. They are in principle directed at the professional public. These services are mainly provided by business management consultants, advertising executives, market researchers and data analysts. Furthermore, it has to be borne in mind that the opponent’s services are limited to very specific activities which are clearly distinct, in nature and purpose, from the contested services as detailed above. This distinction also corresponds with the reality of the marketplace where business management, advertising, marketing or consultancy are provided by agencies that do not normally provide financial, investment or real estate administration services. They operate in different fields of business. The mere fact that they can be directed at the same public is not sufficient in itself to lead to a finding of similarity. Furthermore, they are neither complementary nor in competition. Therefore, all of the contested services in Class 35 are dissimilar to the opponent’s services in Class 36.

Contested services in Class 36

The contested monetary affairs; real estate affairs; financial services including those provided via the internet or other means of telecommunications; banking; information and consultancy relating to financial affairs and banking are identical to the opponent’s services either because they are identically contained in both lists of services (including synonyms) or because they are included in the opponent’s financing services.

The contested insurance services are similar to the opponent’s financing services as they have the same nature and they usually coincide in provider, relevant public and distribution channels. Furthermore, insurance services are of a financial nature first because insurance companies are subject to rules similar to those of financial institutions in relation to licensing, supervision and solvency, and, second, the undertakings offering financial services can also offer insurance services, either directly, or by acting as agents for insurance companies to which they are, in some cases, economically linked.

Contested services in Class 38

The contested telecommunications and electronic transmission relating to financial affairs concern telecommunication services. These services have nothing relevant in common with the opponent’s financial services in Class 36. They have a different nature, purpose and method of use. These services are not complementary nor in competition with each other. Furthermore, they are provided by different undertakings, through different distribution channels and target different relevant publics. The fact that the contested telecommunications and electronic transmission relate to financial affairs is not per se a sign of similarity since the companies that provide telecommunication services and financial services clearly belong to different fields of business with different expertise. Therefore, they are dissimilar.

2. Relevant public — degree of attention

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

In the present case, the goods and services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise. Their degree of attention is considered to be high, especially because these goods and services may have important financial consequences for their users. Therefore, consumers’ level of attention would be quite high when choosing them (03/02/2011, R 719/2010‑1, f@ir Credit (fig.) / FERCREDIT, § 15; 19/09/2012, T‑220/11, F@ir Credit, EU:T:2012:444, dismissed; 14/11/2013, C‑524/12 P, F@ir Credit, EU:C:2013:874, dismissed).

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Portugal.

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).

Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (judgment of 13/02/2007, T-256/04 ‘Respicur’, EU:T:2007:46, § 57).

In the present case, the public will recognize the Portuguese word ‘BANCO’ in the earlier mark as being a financial establishment. Taking into consideration that the relevant services are all related to the finance sector, this word is non-distinctive. Furthermore, even if it cannot be excluded that the letters ‘BiG’ of the earlier mark be associated by a part of the public to the English word ‘big’, which is a relatively basic English word as mentioned by the applicant, such assertion cannot be considered to be true for the public as a whole, essentially because it is preceded by a word in Portuguese and therefore, the element that follows will rather be perceived as fanciful, without any particular meaning, and referring only to the name of the bank. Therefore, since there is no particular reason to assume that the necessary mental steps will automatically be taken to associate the letters ‘BiG’ to the English word ‘big’, this element is considered to be meaningless and to have an average degree of distinctiveness at least for a part of the public.

The public will also dissect the verbal element ‘EuroBic’ of the contested sign since ‘Euro’ will either be associated to ‘European’, alluding to the geographical origin or scope of the goods and services in question or, in this particular case, given that the goods and services all have a relation with finance services, to the ‘Euro’ currency. Either way, the distinctive character of the verbal element ‘Euro’ is, at most, low for the reasons given above. As far as the letters ‘Bic’ are concerned, it cannot be excluded that at least a part of the professional part of the public associate it to the acronym standing for ‘Bank Identifier Code’ that is a code that identifies particular banks worldwide. However, it cannot be assumed that everyone will make such an association since this acronym in particular is normally represented using upper case letters. This is even more true for the public at large that might not be so familiar with this concept. In view of the above, the element ‘Bic’ must be considered to be meaningless and to have a normal degree of distinctiveness, at least for a part of the public.

Furthermore, regardless of the distinctive character of the drawing of the tree in the contested sign, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

As regards the orange and the red rectangles of the signs, even if colours obviously play a role in communication and marketing, it remains that they are part of a simple geometric shape whose role is merely decorative. As a consequence, their distinctive character is rather weak.

As a consequence, the element in both signs to which consumers will pay more attention, namely ‘BiG’ and ‘Bic’, visually and aurally, coincide in the letters/sounds ‘BI’ and even though the letters/sounds ‘G’ in the earlier mark and ‘C’ in the contested sign are different, it remains that they still share a visual similarity since they both have a very similar shape, and that there is very little phonetic distance between them. Although the signs differ in the words ‘BANCO’ in the earlier mark and ‘EURO’ in the contested sign, and regardless of the fact that these elements also coincide in the letter ‘O’, they are non- or lowly distinctive. Additionally, both signs are represented using a rather standard white typeface on a similarly coloured background (orange or red). The additional depiction of the tree in the contested sign will have less impact on consumers for the reasons already given above.

Therefore, the signs are at least visually similar to a low degree and aurally similar to an average degree.

Conceptually, neither of the signs has a meaning as a whole. The words ‘Banco’ in the earlier mark and the word ‘Euro’ in the contested sign will evoke different concepts hence the signs are not conceptually similar. However, since these elements have no or little distinctive character and cannot indicate the commercial origin this does not constitute a significant difference between. The attention of at least part of the relevant public will be attracted by the additional fanciful verbal elements, which have no meaning for them. Furthermore, even if the concept conveyed by the tree in the contested sign has no equivalent in the earlier mark, it will have less impact on consumers for the reasons explained above.

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

4. Distinctiveness of the earlier mark

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

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

The applicant refers to previous decisions of the Office to support the argument that ‘BIG’ is laudatory and that several EUTMs for the word ‘BIG’ were refused. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings because the only verbal element was the word ‘BIG’ that was considered to be devoid of distinctive character and did not concern services in Class 36.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Despite the presence of some non‑distinctive and weak elements in the mark, as stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as normal because of the combination of its various elements and the fact that the first part of the verbal element is in Portuguese does imply that the public will not necessarily associate the letters ‘BiG’ with the English word ‘big’ or its meaning.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17).

According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).

In the present case, the contested goods and services are partly identical, partly similar and partly dissimilar to the opponent’s services. The signs are visually at least similar to a low degree and aurally similar to an average degree on account of the coincidences existing between the verbal elements that at least part of the public will identify as being the trade mark identifiers, namely ‘BiG’ in the earlier mark and ‘Bic’ in the contested sign. Indeed, even if at first the coincidences between the signs are less obvious because of their different beginnings, as already explained above, their impact on consumers will be rather low, rendering the second part of these elements the part on which they will focus the most. The differences between the letters ‘C’ and ‘G’ are considered not sufficient to safely exclude the risk of confusion. Moreover, even if, per se, they have less impact, the fact that both signs are represented in a white typeface on a similarly coloured background renders the signs even more similar and further contribute to the existence of a likelihood of confusion. In addition, even if the depiction of the tree contributes to the distinctive character of the contested sign as a whole and cannot be ignored, it remains that in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component, as already explained in section c).

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. In this case, it is highly conceivable that the relevant consumer will perceive the contested mark as a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion at least on a part of the relevant public. Therefore, and since it is not necessary to establish that there is a likelihood of confusion for the whole of the relevant public (20/07/2017, T-521/15, Diesel v EUIPO, EU:T:2017:536, § 69), the opposition is partly well founded on the basis of the opponent’s Portuguese trade mark registration No 512 902.

The applicant submitted a survey (exhibit 2) carried out by the company DYM in December 2017 in order to know whether the Portuguese average consumer would confuse the signs and used the findings of that survey to argue that there is no likelihood of confusion between the signs in dispute. However, in addition to the fact that the assessment carried out by the Opposition Division differs significantly from the methodology applied in that survey, the sign that serves as a basis of the survey also differs from the one used in the present assessment. Therefore, this argument of the applicant cannot change the outcome reached above.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to the services of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent and in relation to identical or similar goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods and services, as the similarity of goods and services is a sine qua non condition for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the following earlier trade marks:

1. European Union trade mark registration No 4 949 871 in Class 36.

2. European Union trade mark registration No 14 016 547 in Classes 9, 36.

3. European Union trade mark registration No 14 018 774 in Classes 35, 36, 38.

4. Portuguese trade mark registration No 516 848 ‘BANCO BIG’ in Class 36.

5. Portuguese trade mark registration No 446 934 ‘BANCO BIG’ in Class 36.

The goods and services that have been found dissimilar in section a) are:

Class 9: Computer communication software to allow customers to access bank account information and transact bank business.

Class 16: Paper, cardboard and goods made from these materials, in relation to financial activities, not included in other classes; Printed matter; Credit cards, not magnetic; Printed matter, namely cards for use in banking transactions; Periodical magazines; Periodical publications.

Class 35: Advertising in relation to banking and financial services; Business management.

Class 38: Telecommunications and electronic transmission relating to financial affairs.

Earlier trade marks 1), 4), 5) and Class 36 of earlier mark 2) invoked by the opponent essentially cover the same scope of services as that of the Portuguese earlier trade mark used in the above comparison, therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods and services.

In addition to Class 36, earlier trade mark 2) also covers credit cards in Class 9. However, for the same reasons as those already exposed in section a), these goods are also dissimilar to the contested goods and services in Classes 16, 35, 38 mentioned above and to the computer communication software to allow customers to access bank account information and transact bank business in Class 9. Additionally, with respect to the remaining contested goods in Class 9, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods and services.

As far as earlier trade mark 3) is concerned, it is considered to be dissimilar overall to the contested sign because they merely coincide in irrelevant aspects. Indeed, even if the letters ‘BiG’ are still present, they will most likely not be singled out because the letter ‘G’ that is in upper case will rather be seen as being the first letter of the basic English word ‘Global’ (which is identical in Portuguese). Furthermore, the structure of the sign is very different from the structure of the contested sign since it consists of two verbal elements in grey and orange written over two lines on a black rectangular background and with an orange square with vertical white strokes to the right of the verbal elements. To the contrary, the verbal element ‘Bic’ will be singled out from the contested sign, as already explained above, it is placed in the second part of the verbal element that will be used as the trademark identifier and there is a clear contrast between the red background and the remaining elements that are all represented in white.

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected, as far as this earlier right is concerned.

For the sake of completeness, it must be mentioned that even assuming that the earlier marks 1), 2), 3), 4) and 5) enjoy an enhanced distinctiveness due to extensive use, the outcome of no likelihood of confusion remains the same. Therefore, it is not necessary to examine the evidence of extensive use in relation to these earlier marks either.

Finally, the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods and services because the signs and the goods and services are obviously not identical.

REPUTATION — ARTICLE 8(5) EUTMR

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

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

• The signs must be either identical or similar.

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

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

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

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

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 arguments demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

In the present case, apart from claiming a reputation and arguing that consumers will confuse the trade marks because of the similarities between them and that the contested sign will damage the distinctive character or could be detrimental to the reputation of the opponent, the opponent did not submit any facts, arguments or evidence that could support the conclusion that use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

Article 8(5) EUTMR is not intended to prevent the registration of all marks identical or similar to a mark with reputation. According to established case-law, ‘once the condition as to the existence of reputation is fulfilled, the examination has to proceed with the condition that the earlier mark must be detrimentally affected without due cause’ (14/09/1999, C‑375/97, Chevy, EU:C:1999:408, § 30).

Even though consumers may or are likely to establish a link between the two trade marks, in the sense, for example, that the contested trade mark would bring the earlier trade mark to the minds of consumers, it does not follow automatically that the former will take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 71). As mentioned above, the opponent should have submitted evidence, or at least put forward a coherent line of arguments demonstrating what the detriment or unfair advantage would consist of and how it would occur, which could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

This is confirmed by Article 7(2)(f) EUTMDR, which establishes that if the opposition is based on a mark with a reputation within the meaning of Article 8(5) EUTMR, the opponent must submit evidence showing that the mark has a reputation, as well as evidence or arguments demonstrating that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

In the present case, the opponent merely claims that use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade marks. The circumstances described as being ‘detrimental to the repute’, ‘detrimental to the distinctive character’ are in fact very different from each other. In its submissions, the opponent refers to them without any distinction, treating the whole as an unavoidable effect of the similarity of the signs and the alleged reputation of the earlier trade marks. However, there seems to be no good reason to assume that use of the contested trade mark will result in any such events occurring. Although potential detriment or unfair advantage cannot be completely excluded, this is insufficient, as seen above.

Given that the opponent could not establish that the contested sign would take unfair advantage of, or be detrimental to the distinctive character or repute of the earlier trade marks, the opposition is considered not well founded under Article 8(5) EUTMR.

COSTS

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

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

The Opposition Division

Begoña URIARTE VALIENTE

Sandra IBAÑEZ

Sam GYLLING

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.