OPPOSITION No B 2 978 222

J.J. Ballve Sports, S.L., C. Balmes, 243, 4º. 2ª., 08006 Barcelona, Spain (opponent), represented by Ponti & Partners, S.L.P, C.Consell de Cent, 322, 08007 Barcelona, Spain (professional representative)

a g a i n s t

Noxfin LLC, P.O. Box 2355, 10108 New York, United States of America (applicant), represented by Viering Jentschura & Partner mbB, Grillparzerstraße 14, 81675 Munich, Germany (professional representative).

On 31/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 978 222 is upheld for all the contested goods.

2. European Union trade mark application No 16 926 701 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 926 701 for the word mark ‘NOX FIN’. The opposition is based on European Union trade mark registration No 13 857 651 for the figurative mark . The opponent invoked Articles 8(1)(b) and 8(5) 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.

1. The goods

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

Class 18: Bags for sports; haversacks; rucksacks.

Class 25: Boots for sports; trainers [footwear]; sportswear; headgear; cuffs.

Class 28: Rackets; platform tennis paddles; squash rackets; badminton racquets; table tennis paddles; protective covers for rackets; racket covers; tennis bags shaped to contain a racket; grip tape for racquets; grips for rackets; cases adapted for sporting articles; gut for rackets; balls being sporting articles; hand protectors adapted for sporting use.

The contested goods are the following:

Class 9: Eyewear; spectacles; eyeshades; eyeglasses; sunglasses; spectacle frames; eyeglass cases; cases for spectacles and sunglasses; eyeglasses, namely, sunglasses, optical glasses, reading glasses, ski glasses, sports glasses, goggles for sports, field glasses; sunglass frames and sunglass cases; bags and cases specially adapted for holding or carrying portable telephones and telephone equipment and accessories; carrying cases for cell phones; cases for telephones; bags adapted for laptops; earphones and headphones; headphones; personal headphones for use with sound transmitting systems; stereo headphones.

Class 25: Articles of clothing, namely, shirts, casual shirts, T-shirts, vests, tank tops, bodysuits, polo shirts, sports shirts, football and rugby shirts, surfwear, trousers, pants, jeans, overalls, shorts, sports shorts, tracksuits, suits, blazers, jumpsuits, playsuits, jogging suits, sweatshirts, neckties and waistcoats; womenswear, namely, blouses, camisoles, dresses, skirts, culottes, lingerie, leggings and legwarmers; swimwear; swimsuits, underwear; boxer briefs, boxer shorts; articles of outerwear, namely, coats, jackets, casual jackets, waterproof and weatherproof jackets and coats, parkas and body warmers; knitwear, namely, jumpers, shrugs and cardigans; nightwear, namely, pajamas, sleepwear and dressing gowns; footwear; boots; shoes; slippers; sandals; athletic training shoes; socks and hosiery; headgear, namely, hats, caps and berets; scarves; neckwear; shawls; gloves; mittens; belts; headbands and wristbands.

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

The term ‘namely’, used in the applicant’s list of goods 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 bags specially adapted for holding or carrying portable telephones and telephone equipment and accessories; bags adapted for laptops are similar to the opponent’s bags for sports in Class 18. These goods have the same purpose (to carry things), distribution channels and may coincide in producers.

The contested eyeglass cases; cases for spectacles and sunglasses; sunglass cases; cases specially adapted for holding or carrying portable telephones and telephone equipment and accessories; carrying cases for cell phones; cases for telephones are similar to the opponent’s cases adapted for sporting articles in Class 28. These goods have the same purpose, distribution channels and may coincide in producers.

Contrary to the opponent’s assertions, the remaining contested goods in this class, namely eyewear; spectacles; eyeshades; eyeglasses; sunglasses; spectacle frames; eyeglasses, namely, sunglasses, optical glasses, reading glasses, ski glasses, sports glasses, goggles for sports, field glasses; sunglass frames; earphones and headphones; headphones; personal headphones for use with sound transmitting systems; stereo headphones, are considered dissimilar to the opponent’s goods in Classes 18, 25 and 28. Their purposes and methods of use are different. They also differ in distribution channels and producers. Finally, they are neither in competition with each other nor are they complementary to each other.

Contested goods in Class 25

The contested articles of clothing, namely, shirts, casual shirts, T-shirts, vests, tank tops, bodysuits, polo shirts, sports shirts, football and rugby shirts, surfwear, trousers, pants, jeans, overalls, shorts, sports shorts, tracksuits, suits, blazers, jumpsuits, playsuits, jogging suits, sweatshirts, neckties and waistcoats; womenswear, namely, blouses, camisoles, dresses, skirts, culottes, lingerie, leggings and legwarmers; swimwear; swimsuits, underwear; boxer briefs, boxer shorts; articles of outerwear, namely, coats, jackets, casual jackets, waterproof and weatherproof jackets and coats, parkas and body warmers; knitwear, namely, jumpers, shrugs and cardigans; nightwear, namely, pajamas, sleepwear and dressing gowns; socks and hosiery; scarves; neckwear; shawls; gloves; mittens; belts; headbands and wristbands are included in the broad category of, or overlap with, the opponent’s sportswear. Therefore, they are identical.

The contested footwear; boots; shoes; athletic training shoes include, as broader categories, or overlap with, the opponent’s boots for sports. Therefore, they are identical.

The contested headgear, namely, hats, caps and berets are included in the broad category of the opponent’s headgear. Therefore, they are identical.

The contested slippers; sandals are similar to the opponent’s boots for sports. These goods have the same purpose, distribution channels and may coincide in producers.

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 found to be identical or similar are directed at the public at large. The degree of attention is considered to be average.

3. The signs

	NOX FIN
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).

As a preliminary remark, it is reasonable to assume that the verbal element of the earlier mark will be perceived by a vast majority of the relevant public as being the word ‘nox’, as the figurative element at the end is perceived as being the letter ‘X’. This finding was not discussed by the applicant.

The verbal element ‘NOX’ common for both marks has no meaning at least for a significant part of the public in the relevant territory. Consequently, the distinctiveness of this element in relation to the goods concerned should be seen as normal.

The verbal element ‘FIN’ of the contested sign might have different meanings (or it lacks any meaning) depending on the part of the relevant territory, for example, this element will be perceived as an equivalent of the English word end by the Spanish- and French-speaking part of the public or, among other meanings, as a reference to ‘a flat part which sticks out and which is intended to help control movement of an aeroplane, rocket, or bomb’ (see Collins English Dictionary online) by the English-speaking part of the public. In light of the goods at stake, irrespective of whether this element is understood or not, it is considered as normally distinctive.

Visually, the signs coincide in the verbal element ‘NOX’, which is the sole component of the earlier mark and the first verbal element of the contested sign. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. They differ in the additional verbal element ‘FIN’ of the contested sign, which has no counterpart in the earlier mark.

Regarding the typeface in which the verbal element of the earlier mark is depicted, even though this stylisation is rather particular, especially insofar as the letter ‘X’ is concerned, as referred to above, it will not divert the consumer’s attention away from the element it embellishes.

As a rule, when the earlier trade mark is wholly incorporated in the contested sign and performs an independent and distinctive role therein, this is an indication that the two signs are similar (13/06/2012, T‑519/10, SG Seikoh Giken, EU:T:2012:291, § 27; 24/01/2012, T‑260/08, Visual Map, EU:T:2012:23, § 32; 22/05/2012, T‑179/11, Seven Summits, EU:T:2012:254, § 26).

Therefore, the signs are visually similar to an average degree.

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 /NOX/ present identically in both signs. The pronunciation differs in the sound of the additional term /FIN/ of the contested sign, which has no counterpart in the earlier mark.

Therefore, considering that the earlier mark is entirely reproduced in the contested sign and is the first element that will be pronounced by consumers, there is an average degree of aural similarity between the signs.

Conceptually, although the signs as a whole do not have any meaning for a significant part of the public in the relevant territory, the element ‘FIN’ of the contested sign might be associated with the meanings explained above by part of the relevant public. For this part of the public, bearing in mind that one of the signs will not be associated with any meaning, the signs are not conceptually similar. For the part of the public that will not associate the element ‘FIN’ with any meaning, the conceptual comparison is not possible, thus, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 (owing to its well-known character and reputation, as claimed by the opponent). However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed at this stage (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

As it has been concluded, the goods at stake are partly identical, partly similar and partly dissimilar. The earlier mark has an inherent normal degree of distinctiveness. The relevant public is the public at large whose level of attention is average.

The signs are visually and aurally similar to an average degree, whereas from the semantic perspective the marks either are not similar or the conceptual comparison remains neutral.

Account must be also 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).

In addition, it should be stressed that 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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). Therefore, the consumer might perceive the mark applied for as a sub-brand, a variation of the earlier mark, designating a new line of ‘NOX’ goods.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public insofar as the identical and similar goods are concerned. The opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 13 857 651. It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The remaining contested goods 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 cannot be successful.

For the sake of completeness, it should be pointed out that, at this stage, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Consequently, the examination will continue in relation to the remaining contested goods found to be dissimilar on the ground of Article 8(5) EUTMR.

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.

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.

1. 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 27/06/2017. However, the contested trade mark has a priority date of 05/01/2017. 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 for which the opponent has claimed reputation, namely:

Class 18: Bags for sports; haversacks; rucksacks.

Class 25: Boots for sports; trainers [footwear]; sportswear; headgear; cuffs.

Class 28: Rackets; platform tennis paddles; squash rackets; badminton racquets; table tennis paddles; protective covers for rackets; racket covers; tennis bags shaped to contain a racket; grip tape for racquets; grips for rackets; cases adapted for sporting articles; gut for rackets; balls being sporting articles; hand protectors adapted for sporting use.

The opposition is directed against the following goods for which the opposition is not successful under the ground of Article 8(1)(b) EUTMR:

Class 9: Eyewear; spectacles; eyeshades; eyeglasses; sunglasses; spectacle frames; eyeglasses, namely, sunglasses, optical glasses, reading glasses, ski glasses, sports glasses, goggles for sports, field glasses; sunglass frames; earphones and headphones; headphones; personal headphones for use with sound transmitting systems; stereo headphones.

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

On 01/03/2018 the opponent submitted evidence to support this claim. As the opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

• Annex 1: Excerpt from the website https://en.noxsport.es, printed 01/03/2018, where it can be seen ‘NOX’ on different products, including paddle rackets , paddle balls, clothing and bags, all information is in Spanish and English;

• Annex 2: Data originating from the opponent regarding the sales from 2014 to 2017 of ‘NOX’ products (in millions of Euros);

• Annex 3: Data originating from the opponent regarding the significant investment in the advertisement and promotion of the ‘NOX’ trade mark from 2012 to 2017;

• Annex 4: Copy of a detailed market research dated 2016 in Spanish made by an external company, Sport panel, S.A. Following the report, ‘NOX’ is among the top trade marks in the paddle world (by means of example, the reference is made to pages 217, 225, 226, 229, 231 and 240). The data presented refers to, inter alia, the total turnover of paddle rackets and the NOX’s market share comparing to other leading (paddle) sport brands. The information regarding ‘NOX’ refers to the years 2009-2016 and is corroborated with the data in Annex 2 (by means of example, the total turnover for 2015 given in Annex 2 reflects generally the information on page 226). Moreover, it can be ascertained that ‘NOX’ is the No 4 trade mark for paddle rackets on the basis of its percentage in the total market share (the reference is made to page 217);

• Annex 5: Excerpt from a Spanish magazine ‘CMD DPTES. RAQUETA’ dated 2018 from which it can be ascertained that the paddle rackets ‘NOX’ have been awarded in different categories in 2017 in the paddle world;

• Annex 6: List originating from the opponent of paddle players, in total 492, and instructors sponsored by ‘NOX’, the excerpt is dated 05/12/2017;

• Annex 7: Copy of almost 120 pages of press articles (dated 2009-2017) from Spanish magazines, such as ‘Planeta Padel’ and ‘Padel Spain’, which refer to the trade mark ‘NOX’, , , within the paddle world.

The evidence suggests that the trade mark has a consolidated position in the market. Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade mark enjoys a certain degree of recognition among the relevant public, which leads to the conclusion that the earlier trade mark enjoys some degree of reputation. Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR such as, for example, the degree of similarity between the signs, the inherent characteristics of the earlier trade mark, the type of goods and services in question, the relevant consumers, etc.

The documents referring to the promotion of the opponent’s mark give indirect information that the opponent had thoroughly invested in its trade mark (the reference is made to Annex 3). The opponent’s sales (the reference is made to Annexes 2 and 4) and promotional activities (the reference is made to Annexes 3 and 7) – mostly in Spain – are considered an indication that the mark has earned recognition among the relevant public, and that the opponent has undertaken steps to build up a brand image and enhance trade mark awareness among the public. The effects of these actions resulted in the NOX´s high position in the market share for paddle rackets (the reference is made to Annex 4) and leading position in certain rankings (the reference is made to Annex 5).

It is obvious that during the sports matches the ‘NOX’ paddle rackets are shown ‘in action’ and that these matches are usually followed by paddle enthusiasts (the reference is made to the Annex 1, pages 44-46, Campeonato de Europa de Padel in 2017), especially bearing in mind the significant number of players sponsored by ‘NOX’ (the reference is made to Annex 6). Furthermore, it can be ascertained from Annex 7 that the trade mark has also been used in advertising (e.g. magazines for paddle enthusiasts).

Taking into account the above, it is concluded that the earlier mark ‘NOX’ obtained a reputation in Spain at least for paddle rackets, which fall in the broad category of the opponent’s rackets in Class 28. The territorial extent shown by the evidence for Spain is considered to be a sufficiently substantial part of the territory of the European Union (06/10/2009, C‑301/07, Pago, EU:C:2009:611).

For reasons of procedural economy, the Opposition Division will not analyse the evidence with respect to the remaining goods for which the opponent also claimed to have obtained a reputation.

2. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

3. The ‘link’ between the signs

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

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

 the degree of similarity between the signs;

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

 the strength of the earlier mark’s reputation;

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

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

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

The contested goods are the following:

Class 9: Eyewear; spectacles; eyeshades; eyeglasses; sunglasses; spectacle frames; eyeglasses, namely, sunglasses, optical glasses, reading glasses, ski glasses, sports glasses, goggles for sports, field glasses; sunglass frames; earphones and headphones; headphones; personal headphones for use with sound transmitting systems; stereo headphones.

The earlier mark enjoys reputation in the European Union for paddle rackets. As seen above, the signs are visually and aurally similar to an average degree. The element ‘NOX’ is inherently distinctive and does not describe any characteristic of the goods at stake.

The abovementioned contested goods in Class 9 and the opponent’s reputed goods are directed at average consumers. Moreover, given the goods listed in Class 9, it is evident that they can coincide in distribution channels and producers, since they can all be used as sport accessories or whilst practicing sport. By means of example, it is not unusual for the reputed sport companies as the opponent to produce eyewear (for instance to use whilst playing paddle). The same holds true regarding, for instance, headphones, which are often used by sport practitioners while they are training. For the above reasons, there is a clear proximity between the reputed goods and the contested goods in Class 9.

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

4. Risk of injury

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

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

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

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

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

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

The opponent claims that use 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.

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’s arguments to support its claim can be summarized as follows:

• The commercial success of ‘NOX’ brand is based on product quality and successful promotion (famous paddle players are sponsored by ‘NOX’);

• The positive quality image of the earlier trade mark ‘NOX’ will influence the choice of consumers by the products claimed by the contested trademark application, who will attribute the quality of the opponent’s goods to the goods commercialized by the applicant;

• A part of consumers having initially the intention to purchase ‘NOX’ products will erroneously buy a product marked ‘NOX FIN’ confusing them or believing that there exists an economic link between both companies and expecting ‘NOX’ goods quality.

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.)

The applicant’s intention is not a material factor. Taking unfair advantage of the distinctiveness or the repute of a trade mark may be a deliberate decision, for example, where there is clear exploitation and free-riding on the coat-tails of a famous mark, or an attempt to trade upon the reputation of a famous mark. However, taking unfair advantage does not necessarily require a deliberate intention to exploit the goodwill attached to someone else’s trade mark. The concept of taking unfair advantage ‘concerns the risk that the image of the mark with a reputation or the characteristics that it projects are transferred to the goods and services covered by the mark applied for, with the result that the marketing of those goods and services is made easier by that association with the earlier mark with a reputation’ (19/06/2008, T‑93/06, Mineral Spa, EU:T:2008:215, § 40; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40; 30/01/2008, T‑128/06, Camelo, EU:T:2008:22, § 46).

Taking into account the similarity of the marks, the reputation of ‘NOX’ and the link between the relevant goods, as examined in detail above, it is concluded that the contested mark would indeed benefit from the attractiveness of ‘NOX’ and its marketing efforts. It should be pointed out that, the more similar the marks are, the more likely it is that the later mark will bring the earlier mark with a reputation to the mind of the relevant public (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 26; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 44). Consequently, in the present case, it is highly probable that consumers will make a direct association between the marks concerned.

In the Opposition Division’s view, there is a probability of free-riding in the circumstances of this case. The undeniably established use and recognition make it probable that the consumers’ economical behaviour would be swayed in favour of the applicant’s goods solely because they are commercialised under the contested sign.

The strong distinctiveness (i.e. reputation) of the earlier mark allows the positive characteristics associated with it to be easily attributed to the applicant’s sign, which could positively influence the choice of the consumer. Furthermore, a possible link between the signs might facilitate the introduction in the market of the contested goods bearing the contested sign, diminishing the need for investment in advertising and allowing the applicant to benefit from the opponent’s efforts and leading position in the market. In view of its special attractiveness, ‘NOX’ may be exploited even outside its natural market sector, for example, by licensing or merchandising.

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 mark.

Other types of injury

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

5. Conclusion

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

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Saida CRABBE

Klaudia MISZTAL

Marta GARCÍA COLLADO

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.