OPPOSITION No B 2 987 751

BlackBerry Limited, 2200 University Avenue East, N2K 0A7, Waterloo, Canada (opponent), represented by Brandstorming, 12, rue du Mont Thabor, 75001, Paris, France (professional representative)

a g a i n s t

lemay innovation, 40 rue de l'Abbé Lemire, 59110 La Madeleine, France (applicant), represented by Cabinet Jurisexpert, 104 rue Esquermoise, 59000 Lille, France (professional representative).

On 31/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 987 751 is partially upheld, namely for the following contested services:

Class 42: IT services.

2. European Union trade mark application No 17 067 901 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 067 901 for the figurative mark . The opposition is based on European Union trade mark registration No 11 882 081 for the word mark ‘BLACKBERRY’. The opponent invoked Article 8(1)(b) and 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 claims to have due cause for using the contested mark. The applicant’s claim will need to be examined only if the three abovementioned conditions are met (22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 60). Therefore, the Opposition Division will only deal with this issue, if still necessary, at the end of the decision.

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 02/08/2017. 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: Computer software; computer software for computing and communication devices in the nature of apparatus for recording, transmission, processing or reproduction of data, sound or images, data processing equipment, and computers, and mobile computing and communication devices in the nature of mobile phones, smartphones, personal digital assistants (PDAs), tablet phones, tablet computers, mobile computers, and mobile apparatus for recording, transmission, processing or reproduction of data, sound or images; embedded computer software used as a feature found on the foregoing computing and communication devices and mobile computing and communication devices; downloadable software for the foregoing computing and communication devices and mobile computing and communication devices; mobile application software for the foregoing computing and communication devices and mobile computing and communication devices; operating system software for theforegoing computing and communication devices and mobile computing and communication devices; enterprise software for the foregoing computing and communication devices and mobile computing and communication devices.

Class 38: Telecommunications; instant messaging services; telecommunications services, namely, transmission of data, sound or images; telecommunications services, namely, transmission of GPS navigation, messages, texts, emails, notification alerts, status updates, documents, images, voice, music files, video files, audio files, audiovideo files, streaming media files, multimedia files, location information and paging information; telecommunications services, namely, providing access to data, sound or images; and telecommunications services, namely, providing access to GPS navigation, messages, texts, emails, notification alerts, status updates, documents, images, voice, music files, video files, audio files, audio-video files, streaming media files, multimedia files, location information and paging information.

Class 42: Technological services; technical support services, namely, troubleshooting in the nature of diagnosing hardware and software problems concerning computing and communication devices in the nature of apparatus for recording, transmission, processing or reproduction of data, sound or images, data processing equipment, and computers, and mobile computing and communication devices in the nature of mobile phones, smartphones, personal digital assistants (PDAs), tablet phones, tablet computers, mobile computers, and mobile apparatus for recording, transmission, processing or reproduction of data, sound or images, and goods/services therefor; installation, maintenance and repair of computer software for the foregoing computing and communication devices and mobile computing and communication devices, and goods/services therefor; cloud computing featuring software for use in the field of the foregoing computing and communication devices and mobile computing and communication devices, and goods/services therefor; software as a service (SAAS) services featuring software for use in the field of the foregoing computing and communication devices and mobile computing and communication devices, and goods/services therefor.

The opposition is directed against the following services:

Class 35: Advertising, marketing and promotional services.

Class 42: IT services.

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 15/05/2018, 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:

Attachments 2-4: previous decisions of the EUIPO, of IP offices from Member States and of WIPO, in the original language together with their translations into English, which establish similarity between an earlier mark consisting of, or including as their sole verbal element, the word ‘BLACKBERRY’ and a contested sign including the term ‘BERRY’ (‘BLUEBERRY’, , ‘ , ‘store berry’, , UtterBerry, ‘Greenberry’, ‘WHITE BERRY’, ‘Strawberry’, ‘blueberry’, ‘berrylab’, ‘ataberry’, ‘BERRYFONE’, ‘SIMBERRY’, ‘ ’, ‘BERRYBOOT’).

Attachment 5: printouts from the opponent’s website http://global.blackberry.com, which describe the company as a ‘global leader in mobile communications which revolutionised the mobile industry when it was introduced in 1999, and which now aims to inspire the success of its millions of customers around the world by continuously pushing the boundaries of mobile experiences’.

The printouts refer to ‘secure smartphones’ (protected from malware and data breaches), to smartphone apps for boosting productivity by getting things done effortlessly on a smartphone every day, and to BlackBerry Enterprise Software, which offers a comprehensive, native-mobile approach to security at the level of all endpoints of an enterprise.

Attachments 6-8: decisions of the EUIPO, of national offices (France and Spain) and of WIPO’s Arbitration and Mediation Centre acknowledging the globally well-known character of the trade mark ‘BlackBerry’ (in the original language with a translation into English).

Attachment 9: rankings dated 2008-2011. For example:

- BrandZ Top 100 Most valuable Global Brands ranking 2010: BlackBerry is listed in 14th position in the general ranking and 6th position in the technology section. It was in 25th position in the same ranking in 2011, being 8th in the top technology section, with, in the ‘highlights’, an indication that BlackBerry worked to sustain appeal among two high-messaging groups: business people and teens;

- 56th in Interbrand’s Best Global Brands 2011, with a reference that it is considered the corporate standard when it comes to wireless devices and that the Blackberry brand remains powerful;

- 2nd position in the 2011 Business Superbrands ranking established by The Centre for Brand Analysis (3rd in the same ranking for 2010, 23rd in 2012);

- 54th in Interbrand’s Best Global Brands 2010 ranking with the comment that it remains the most popular smartphone brand in the corporate world and that it is diversifying, moving from devices to network services and widening its product line;

- 93th in Best Interbrands’ Global Brands 2012 ranking;

- 45th in Headstream’s 2012 Social Brands 100 ranking;

- 10th position in General Sentiment, Media value report, brand exposure analysis for Q4 2011;

- 6th position in the 2011/2012 CoolBrands’ ranking by The Centre for Brand Analysis.

Attachment 10: extract from the 2005 UK CoolBrands study, by the Superbrands Organisation, in which BlackBerry was third among the ‘coolest technology brands’.

Attachment 11: market research by the firm Penn, Schoen & Berland Associates, dated April 2007, conducted in 2006/2007 among mobile professionals in the UK, Spain, Germany, Italy and France, indicating an increase in the awareness of, familiarity with or purchase consideration in relation to the BlackBerry brand over the period in all territories.

Attachments 12-13: press articles concerning the release and commercial success of the opponent’s IT solutions, and telecommunication devices, inter alia the following, per country.

Belgium:

- articles from Het Parool, dated 2010, entitled ‘Blackberry super popular among Amsterdam Youths’ and ‘At KPN and Vodafone, one in three phones sold in Amsterdam is currently a BlackBerry’;

- articles from DSDeStandaard, dated 2013, entitled ‘Alicia Keyes becomes Creative Director at BlackBerry’ and ‘The phone maker will launch at least 6 new devices this year’;

- articles from Le Soir, dated 2016, entitled ‘The BlackBerry Priv is available in Belgium’.

UK:

- article from The Guardian, dated 2013, entitled ‘BlackBerry BBM gains 20m new users from first week on iPhone and Android’.

- Article from www.itpro.co.uk, dated 2015, entitled ‘BlackBerry launches new cloud-based EMM solution’ (‘Announced at last month’s Mobile World Congress in Barcelona, the launch sees BlackBerry’s successful SaaS lineup continuing to grow…’);

- articles from The Guardian, The Telegraph and The Times, dated 2009, related to the fact that Barack Obama wanted to use BlackBerry as president;

- article from http://crackberry.com, dated 2012, entitled ‘BlackBerry is UK’s top smartphone — yet again’;

- articles from www.theguardian.com entitled ‘BlackBerry Q10 is “fastest-selling ever” at Selfridges as corporates snap it up’, dated 2013, and ‘David Cameron: I can manage the country on my BlackBerry’, dated 2014;

- article from The Guardian dated 2014 entitled ‘Why Kim Kardashian has a stash of Blackberry phones’.

France:

- article from www.lesechos.fr, dated 2015, entitled ‘BlackBerry: BBM messaging services reach 100 million downloads on Android’. The article also refers to the launch of four smartphones in 2015.

- article from www.sudouest.fr, dated 2011, indicating that Nicolas Sarkozy had to renounce his BlackBerry after being elected President;

- articles from Le Monde entitled ‘The BlackBerry, the mobile phone that knows how to manage emails triumphs with executives’, dated 2005, and ‘BlackBerry enters the “tactile era” with its BlackBerry Z10’, dated 2013;

- article from www.latribune.fr, dated 2010, entitled ‘BlackBerry becomes one of the five best-selling mobiles in the world’.

Spain:

- article from El País, dated 2010, entitled ‘BlackBerry wins markets despite iPhone media boom’.

Germany:

- article, dated 2014 from www.wallstreet-online.de, which refers to the opponent as a ‘world leader in mobile communications’ which has ‘unveiled plans for BlackBerry Enterprise Service 12 (BES12), a new enterprise mobility solution…’.

- article from www.silicon.de dated 2015: ‘Deutsche Telekom extends its range of enterprise mobility management solutions for business customers (EMM). New in the portfolio is not the EMM solution Blackberry Enterprise Services 12’.

Attachment 14: pictures of celebrities and political leaders showing their smartphones, including Beyoncé, Madonna, Tom Cruise, Hilary Clinton, Angela Merkel and Barack Obama.

Attachment 15: List of awards received by the opponent since 1994. For example:

- BlackBerry Bold 900 named Best Business Device at the Mobile Industry Awards 2009;

- BlackBerry Enterprise Server v5.0 named Best Mobile Enterprise Product or Service at the Mobile World Congress in 2010 in Barcelona;

- BlackBerry Z30 named Consumer Product of the Year in the Best in Biz Awards 2014.

Attachment 16: extracts from the opponent’s Facebook and Twitter pages, dated with the Wayback Machine Internet archive.

Attachment 17: list of the Facebook ‘Markenranking’ for 2010-2012 established by the German company Werben & Verkaufen, in which the BlackBerry brand is listed among the top 50 worldwide brands with the highest number of Facebook fans (30th in 2010, 18th in 2011 and 37th in 2012).

Attachment 18: a document issued by the opponent entitled ‘The CIO’s Guide to UEM’. The document’s introduction clarifies that UEM (unified endpoint management) encompasses management, security and identity across mobile devices. It presents the BlackBerry Enterprise Mobility Suite as a solution for companies with the highest security requirements or that must achieve regulatory compliance in mobility. According to this document, BlackBerry’s enterprise solutions support 16 of the G20 governments, the top 10 largest law firms, all of the 5 largest oil and gas businesses and all of the Fortune 100 commercial banks.

A printout from the opponent’s LinkedIn page with an article entitled ‘Software is the New BlackBerry’, which indicates that ‘Today’s BlackBerry is a software company with a standard security for managing the network of mobile and wearable devices and other end points within enterprises’. According to the document, BlackBerry is ranked among the top 10% of all cybersecurity providers, all G7 governments and 15 of the G20 governments are BlackBerry customers, and BlackBerry Unified Endpoint Management is the most widely deployed service of its kind among Fortune 500 companies.

Attachments 19-27: screen captures from the opponent’s website, dated by the Wayback Machine internet archive, concerning the opponent’s IT solutions. The dates are from 2004 to 2016 and the screenshots are in several languages (English, German, Italian, French and Spanish). They refer to software both for the general public and for the professional public.

Attachment 28: document issued by the opponent entitled ‘Blackberry Enterprise Portfolio Welcome to the end of mobile compromise’, concerning the opponent’s cross-platforms mobility solutions encompassing EMM, secured telecommunications and cloud computing services.

Attachment 29: screen captures of the opponent’ partners in the UK for the implementation of EMM solutions.

Attachment 30: extracts from a brochure entitled ‘BlackBerry Customer Success Stories – Serious Mobility for Serious Business’, dated 2014. One case study concerns a soccer club in Germany, another is about the local government of the city of Beuningen (the Netherlands) (‘With BlackBerry Balance, staff members can separate work and personal content, etc.’). A major Spanish risk consultancy firm is also mentioned (‘We have been using the Blackberry solution for many years and we will continue to trust BlackBerry as our Enterprise Mobility Management (EMM) provider’) as well as companies in the UK (‘with BES, we have comprehensive security and app management through a single management console’).

Attachment 31: a document printed from www.gov.uk to show that BlackBerry’s Enterprise Mobility Management solutions have been adopted by the UK government.

Attachments 32-35: brochures concerning the opponent’s Enterprise Mobility Management solutions in German dated 2014, 2015 and 2016; one brochure, entitled ‘Why the world’s leading businesses trust BlackBerry’, indicates, for instance, that ‘enterprises and governments worldwide are moving forward with BlackBerry’ and that BlackBerry Enterprise Mobility Management (EMM) solutions are used by all 7 G7 governments and by 16 G20 governments, by 5 of the world’s largest global oil and gas businesses, and by all of the top 10 pharmaceutical, automotive and law firms.

Attachment 36: press releases, dated 2016, indicating that BlackBerry has been named a leader in Gartner’s Enterprise Mobility Magic Quadrant, and another, dated 2014, referring to Forrester Research Inc. also evaluating BlackBerry as one of the leaders in enterprise mobility management. The opponent explains that these companies are research and advisory firms providing IT-related insights to business leaders.

Attachment 37: an article from http://fr.reuters.com dated 2015, in French, entitled ‘The performance of BlackBerry’s software pleases the markets’, as well as other articles referring to BlackBerry’s continually increasing sales figures in relation to software.

Attachment 38: extract from the Wikipedia collaborative encyclopaedia mentioning the numerous smartphone models manufactured and sold by the opponent. The list shows that many different models were launched in the years 2007-2014 and also refers to some models launched in 2015-2017.

Attachment 39: press releases from the opponent to announce the launch of several of its smartphone products in the UK in 2003, 2004 and 2006. They stress the opponent’s commitment to professional customers (‘the new BlackBerry models give customers the opportunity to work seamlessly while out of the office and on the move across the globe’; ‘the extension of our BlackBerry range of devices is vital to meet the mobile access needs of both business customers as well as consumers’; ‘providing users with all the capabilities needed to work efficiency when out of the office, the BlackBerry …’).

Attachments 40-44: Screen captures from the websites of online stores dated 2007-2016 obtained through the internet archive Wayback Machine, showing that ‘BlackBerry’ smartphones have been sold online in the UK, France, Benelux, Italy and Denmark (on www.mobiles.co.uk in 2007; on http://clove.co.uk in 2009, 2011, 2013, 2014; on www.phonehouse.fr in 2007, 2009, 2011; on www.fnac.com (a French website) in 2014, 2015 and 2016 (with the comment that ‘to combine life and work, nothing is better than a BlackBerry smartphone’); on www.euronics.it in 2013; on www.vergelijk.be in 2009; on www.gsmweb.nl and www.pdashop.be in 2012, 2014 and 2015; on http://ldlc.be in 2016; and on www.pixmania.com/dk in 2009, 2010 and 2013).

Attachment 45: documents related to campaigns by the main EU telecom operators for ‘BLACKBERRY’ smartphones:

- Campaigns by all main French telecom operators for the launch of various smartphones (BlackBerry Bold 9900, BlackBerry Bold 9700 and BlackBerry Curve 8900) on their websites and through billboard advertising. Some campaigns specifically targeted business customers. The opponent indicates that the smartphones in question were launched in 2011, 2009 and 2008.

- Campaigns by British telecom operators for the launch of BlackBerry smartphones in 2009.

- Photographs of magazines/printouts of online campaigns/street advertisements by Spanish telecom operators, in relation to BlackBerry smartphones. The dates, in 2009, 2010 and 2011, are indicated by the opponent next to the screenshots.

- Campaigns by Belgian telecom operators for the launch of the mobile phone BlackBerry Z10 and the associated new operating system BlackBerry 10. The printouts, from www.orange.be and www.astel.be, refer to the launch of this product in Belgium in 2013.

- Campaigns by German telecom operators for the launch of the BlackBerry mobile phones Z10, Q10 and Z30 in 2013.

Attachment 46: a very high number of photographs related to promotional campaigns for BlackBerry smartphones in France, in the form of in-store campaigns, banners, online store campaigns, and advertisements in leaflets, in newspapers, in newsletters and on billboards. The campaigns were undertaken by many different telecom operators and major retailers. The opponent indicates that these campaigns concern smartphone models launched between 2011 and 2015.

Attachment 47: copy of a presentation entitled ‘BlackBerry 10 — BlackBerry Netherlands’ dated July 2013. It includes photographs of a campaign for BlackBerry in a shop of Dutch telecom retailer The Phone House (the text used for this campaign is in Dutch).

Attachments 48-50: advertising materials showing the opponent’s promotional activities (press advertisements, billboard advertisements and advertisements in newsletters) in relation to its own devices, in several languages (English, German, Dutch and French) for various models of BlackBerry smartphones.

The dates that can be seen are 2006, 2011, 2013, 2014 and 2015. One is a picture of Barack Obama holding a BlackBerry smartphone with the title ‘I’m Berry Attached’ and the text reads ‘some habits are hard to break, which is why President-Elect Barack Obama, against the wishes of attorneys and his own secret service, is lobbying to keep the ease, convenience and reliability of his BlackBerry’. One publication in German mentions ‘With the BlackBerry passport, you have the new business class of smartphones in your hands … From 1 October to 31 December 2014, you will receive a bonus …’

Attachment 51: extracts from the opponent’s annual reports from 1999 to 2004.

The applicant submits that the evidence concerns the figurative trade mark and is, therefore, not relevant in relation to the present earlier word mark. However, this is simply not the case as many documents also refer to the opponent’s trade mark as ‘Blackberry’, in verbal form. Additionally, the figurative element clearly has an ancillary, decorative purpose in the figurative mark mentioned hence, in principle, reputation only for that mark would be transposable to the word alone.

The evidence indicates an exceptionally high reputation of Blackberry smartphones up to at least 2011 or even 2013. It shows that the opponent was a pioneer in the smartphone market when it introduced the first models with keyboards and messaging software at the very end of the 1990s, and that the trade mark ‘BLACKBERRY’ has been subject to intensive use in several countries of the European Union especially in the period 2005-2011. During that period, the opponent launched several new models of BlackBerry smartphones each year, which were readily accessible to the public through the main telecom operators and many online stores. Furthermore, the documents show that BlackBerry mobile phones were intensely advertised, through a variety of different means (in retailers’ leaflets, on billboards, through in-store campaigns, through advertisements in the press, etc.), in several countries of the European Union (France, the UK, Germany and Benelux), leaving no doubt as to the resulting high degree of awareness of the trade mark in relation to smartphones among the public in those countries. There is also ample evidence that the commercial success of the opponent’s smartphones was reported in the press in the European Union. Some of the items of evidence indicate that a BlackBerry device was, at some point, a must-have for businessmen and for political leaders. All of the above indicates an extremely high degree of recognition on the part of the public during that period. Furthermore, the articles in the EU press demonstrating that Barack Obama, Nicolas Sarkozy and David Cameron were using a BlackBerry smartphone are likely to have had a strong and long-lasting impact on the public of the European Union.

The evidence also clearly indicates continued use and even commercial success after 2011: new BlackBerry smartphones were introduced in Belgium in 2013 and articles indicating commercial success were published on, for instance, www.theguardian.com, in 2013 (‘BlackBerry Q10 is “fastest-selling ever” at Selfridges as corporates snap it up’) and in 2014 (‘David Cameron: I can manage the country on my BlackBerry’). The launch of the BlackBerry Z10 in 2013 was announced by an article on www.lemonde.fr entitled ‘BlackBerry enters the “tactile era” with its BlackBerry Z10’ and by articles in the Belgian press. Telecom operators in Germany and Belgium organised promotional campaigns that year for the launch of those devices. Several models of BlackBerry mobile phones were still on sale through the main online stores in 2016.

Although the most recent rankings submitted show that the trade mark ‘BLACKBERRY’ no longer occupied the highest positions as of 2013, the fact remains that even in a quickly evolving market such as the market for smartphones, a strong reputation, that is, immediate recognition by a significant part of the public, cannot be simply switched off because competitors take the lead. The market in question is indeed highly competitive but the number of real ‘big players’ is not that high, which makes it less likely that they are forgotten by consumers when they are no longer leaders in the sector.

In the present case, the evidence submitted allows the conclusion that the earlier trade mark enjoyed at the relevant date a degree of recognition among the public in the European Union, which is sufficient to establish strong reputation for smartphones.

The evidence also proves reputation of the earlier mark, albeit to a lesser extent, in relation to enterprise mobility management (EMM) software, as it contains indications of the commercial success of this product with professional customers, including companies in several countries of the European Union. The evidence reflects that the opponent’s mobility solutions are used by the majority of G7 and G20 governments, and articles in the EU press refer to the opponent as a world leader in this field. The opponent’s EMM software is listed in specialist rankings (Forrester Research Inc.’s and Gartner’s rankings). All of the above allows safe inference of a degree of awareness on the part of the relevant business public in the EU, which is compatible with the threshold of recognition required for reputation under Article 8(5) EUTMR.

The applicant argues that the reputation of the earlier mark should be demonstrated in the whole European Union. The Court has clarified that for an earlier European Union trade mark reputation throughout the territory of a single Member State may suffice (06/10/2009, C-301/07, Pago, EU:C:2009:611). In the present case, the evidence shows reputation of the earlier mark for smartphones and for enterprise mobility management software in several countries of the European Union such as Germany, France and the United Kingdom The earlier mark is therefore deemed to be reputed for those goods in the European Union.

The opponent claims reputation for other telecommunication devices, such as computers and tablet computers. It has submitted previous decisions in which the reputation of the earlier mark ‘BLACKBERRY’ or has been established. In some of these decisions, reputation has been considered proven in relation to several types of communication devices and their accessories, and software, in Class 9. 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).

In this case, the evidence submitted does not allow a conclusion of reputation for goods other than those mentioned because for those other goods, there is no indication of any enhanced recognition on the part of the public. Therefore, the Opposition Division finds that reputation is not proven for telecommunication devices other than smartphone and for software other than EMM software as there is little or no reference to such goods in the evidence.

Furthermore, there is no evidence in support of reputation for the other goods in Class 9 or for telecommunications services and IT services in Classes 38 and 42.

On the basis of the above, the Opposition Division concludes that the earlier trade mark has a reputation in the European Union in relation to smartphones and to enterprise mobility management (EMM) software (Class 9).

b) The signs

BLACKBERRY
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 word ‘BLACKBERRY’ of which the earlier mark consists is, in English, the name of a fruit. The word is formed by the conjunction of the words ‘BLACK’ and ‘BERRY’. The fruit indeed consists, as indicated by its name, of a black or dark purple berry (where ‘berry’ refers to a small fruit that grows on a bush or a tree). The word ‘Blackberry’ as a whole is fully distinctive in relation to the relevant goods.

The relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58).

The non-English-speaking public will not perceive the meaning of the word ‘BLACKBERRY’ as a whole but the vast majority will recognise the very basic English word ‘BLACK’, which refers to a colour. The meaningless ending, ‘BERRY’ will be perceived as fully distinctive. Therefore, the non-English-speaking public will perceive the mark as the adjective ‘BLACK’ conjoined with a meaningless, distinctive word. The element ‘BLACK’ may be associated with the colour of the smartphones for which the earlier mark is reputed, and is to that extent, weak for those goods. At the very least it will be perceived as a qualifier of the next meaningless word ‘Berry’ and as the weaker element of the sign.

The contested sign consists of the word ‘MAZEBERRY’ followed by a kind of bar chart, namely three columns of different heights and different shades of blue, both in a more or less rectangular shape. None of these elements is visually dominant in comparison with others.

The word ‘MAZEBERRY’, has no meaning as a whole in any of the relevant languages. However, for the reasons previously mentioned, the English-speaking public will break it down into the two existing English words ‘MAZE’ (referring to a network of paths through which one has to find a way to the exit or to a goal) and ‘BERRY’ (a fruit). The words do not refer to the services at issue and therefore both parts of the verbal element are distinctive to a normal degree. The non-English-speaking public will perceive the contested sign as an indivisible and meaningless element with a normal degree of distinctiveness. The English word ‘MAZE’ is not so basic as to be identified by that public.

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). In this case, the applicant argues that the figurative elements of its sign are ‘determining features for the memorisation of the sign by the public’. However, this claim is not well founded and, on the contrary, the mentioned principle established by case law is fully applicable considering the normal distinctiveness of the verbal element, the fact that the rectangular frame is a banal background and the fact that the bar chart is placed after the verbal element which will first catch the attention of the public.

At this stage, the Opposition Division finds it useful to address the applicant’s argument that many trade marks include the element ‘BERRY, among which 618 EUTMs (without any further specification). However, the existence of several trade mark registrations does not necessarily reflect the situation in the market as it cannot be assumed that all such trade marks have been effectively used. The applicant has not submitted any evidence which may demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the term ‘BERRY’. Therefore, the applicant’s claims must be set aside and the comparison below proceeds on the findings previously established.

Visually, the earlier mark and the contested sign’s verbal element are approximately the same length and coincide in their last five letters. They also share the letter ‘A’ but this isolated coincidence does not contribute to the visual similarity given that the adjacent letters are different. The signs differ in all the remaining letters. They also differ in the figurative elements of the contested sign, which are of reduced relevance given that these have limited impact on the public.

The applicant argues that the beginnings of the signs, which is the part to which the public usually attaches more importance, are clearly different. In principle, the first part of a sign catches consumers’ attention because they read from left to right, and is remembered more clearly than the rest of the sign. However, this consideration cannot apply in every case (12/11/2008, T-281/07 Ecoblue, EU:T:2008:489, § 26-32) and does not mean that the final part of the sign is negligible and that it should not be taken into account in the comparison. In the present case, the coinciding string of letters is long enough to be noticed by the public, despite its position at the ends of the signs.

Furthermore, the non-English-speaking public will pay particular attention to the final part of the earlier mark, ‘BERRY’, because the beginning of this mark, ‘BLACK’, is an adjective which will be perceived as a qualifier of the next word, and is likely, in addition to be perceived as the colour of the smartphones at issue.

The English-speaking public will also perceive the element ‘BERRY’ of the earlier mark as an important element in relation to all of the goods, as it is the essential part in the word ‘Blackberry’ namely the part which indicates a fruit whereas ‘BLACK’ is used as a qualifier of the latter.

In view of the above, the signs are, visually similar to a below average degree.

Aurally, the signs are similar because they share their last two syllables. In some languages such as French, Spanish or German, they also share the vowel sound of the first syllable (/blak-be-ri/) v /maz-be-ri/). In at least French and English, both signs are formed by three syllables and have the same rhythm and intonation. Therefore, the degree of similarity is average, at least for the French-speaking and the English-speaking public.

Conceptually, the signs are not similar for the non-English-speaking public because that part of the public will not associate the contested sign with any concept and will perceive the meaning of the word ‘BLACK’ in the earlier mark.

For the English-speaking public, the earlier mark consists of a word that refers to a specific type of berry. The contested sign as a whole is an invented term consisting of two conjoined words that will be understood by the English-speaking public, the second of which is the word ‘berry’.

In both signs, the English word ‘berry’ will be associated with the meaning previously indicated, of a fruit that can be found on bushes or trees.

There are, in the English language, a multitude of words including the suffix ‘berry’ which refer to a plant/shrub and to the fruit which grows on these. This includes not only the common fruits such as raspberry, strawberry, or blueberry but also others, less common, such as cloudberry, bunchberry, boxberry. The public will not necessarily know these words specifically but will be aware that there exists a lot of different berry fruits and will perceive ‘berry’ as referring to a fruit even when combined with ‘maze’.

Therefore, as far as the English-speaking public is concerned the ‘berry’ part of both signs will be associated with the meaning previously indicated, of a fruit that can be found on bushes or trees. The mere fact that two words can be grouped under a common generic term such as ‘fruit’ does not necessarily trigger a finding of conceptual similarity. However, in the present case, both signs refer to a berry fruit. Therefore, the semantic link is considered narrow enough to establish that there is an average degree of conceptual similarity between them.

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 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 earlier mark ‘BLACKBERRY’ enjoys a strong reputation for smartphones and is also reputed for enterprise mobility management software. Furthermore, it is inherently distinctive to a normal degree for those goods.

According to the Court of Justice of the European Union, if the public targeted by each of the two marks may never be confronted with the other mark, it will not establish any link between those marks (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 48.)

However, in this case, the opponent’s smartphones and the contested IT services are intended for the public at large including a professional public. The opponent’s Enterprise Mobility Management (EMM) software and the contested services in Class 35 are intended for the business public.

Considering the above, namely the similarity established between the signs and the overlap in the target public, the Opposition Division is of the view that the contested sign when used in relation to the contested services is likely to bring the earlier mark ‘BLACKBERRY’ to the mind of the relevant public. This link is stronger as regards the contested IT services as the field of IT and smartphones are closely related whereas it is less straightforward, but cannot be excluded, for the services in Class 35.

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).

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 claims that the use of the contested trade mark will allow the applicant to take advantage of the distinctiveness and repute of the earlier 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).

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 36.)

In order to determine whether the use of the contested sign takes unfair advantage of the distinctive character or the repute of the earlier trade mark, it is necessary to undertake a global assessment, taking into account all factors relevant to the circumstances of the case, which include the strength of the mark’s reputation and the degree of distinctive character of the mark, the degree of similarity between the marks and the nature and degree of proximity of the goods or services concerned.

The rationale behind the extended protection under Article 8(5) EUTMR is the consideration that the function and value of a trade mark are not confined to its being an indicator of origin. A trade mark can also convey messages other than an indication of the origin of the goods and services, such as a promise or reassurance of quality or a certain image of, for example, luxury, lifestyle or exclusivity. (‘advertising function’) (18/06/2009, C-487/07, L’Oréal, EU:C:2009:378). Trade mark owners frequently invest large sums of money and make significant efforts to create a certain brand image associated with their trade mark. This image associated with a trade mark confers on it an — often significant — economic value, which is independent of that of the goods and services for which it is registered.

According to the Court, the stronger the earlier mark’s distinctive character and reputation, the easier it will be to accept that detriment has been caused to it (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 67, 74; 25/05/2005, T-67/04, Spa-Finders, EU:T:2005:179, § 41). The same applies with regard to the unfair advantage that the applicant might enjoy at the expense of the earlier mark. A very strong reputation is both easier to harm and more tempting to take advantage of, owing to its great value.

It is also clear from case-law that the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark (see, to that effect, by analogy, 18/06/2009, C-487/07, L’Oréal, EU:C:2009:378, § 44; 27/11/2008, C-252/07, Intel, EU:C:2008:655, §67-69).

The proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark for the purposes of Article 8(5) EUTMR, but it must adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or of detriment. Such a conclusion may be established, in particular, on the basis of logical deductions made from an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case (16/12/2010, T-345/08 & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 82). When it is foreseeable that such injury will ensue from the use which the proprietor of the later mark may be led to make of its mark, the proprietor of the earlier mark cannot be required to wait for it actually to occur in order to be able to prohibit that use.

In support of unfair advantage, the opponent refers to the strong reputation of the earlier mark, to the fact that the signs are visually, aurally and conceptually similar, and to the strong link between the marks at issue. It also claims that the evidence proves that it has made significant investments to promote its trade mark and it infers that the use of the contested trade mark in relation to the contested services would benefit from those investments without efforts on the part of the applicant.

The opponent also puts forwards that the proximity between the contested IT services in Class 42 and the smartphones for which the earlier mark is reputed, reinforces the likelihood that the image conveyed by the earlier mark be transferred to the applicant’s services.

Concerning the contested services in Class 35, the opponent argues that Article 8(5) EUTMR is applicable to dissimilar services and that there are close links between its IT-related goods and services and the contested advertising, marketing and promotional activities as these involve the use of IT solutions (such as digital marketing services, online and/or mobile advertising, spams). In the opponent’s view, consumers facing ‘MAZEBERRY’ branded services will automatically associate them with the opponent’s reputed trade mark, by thinking that ‘MAZEBERRY’ is a newly created marketing division of Blackberry ltd for operating these kinds of services provided with the use of the opponent’s goods or services.

As regards the contested services in Class 42, the Opposition Division is indeed of the opinion that those services belong to markets which are so closely related to the market of the reputed trade mark that the positive image (for instance, of security and reliability) conveyed by the reputed trade mark ‘BLACKBERRY’ in the field of telecommunication devices/software is highly likely to be perceived by the public as an incentive to resort the contested IT services rendered under the contested, similar trade mark.

However, there seems to be no good reason to assume that use of the contested trade mark will result in any such events occurring as regards the promotional services in Class 35. Firstly, the opponent’s arguments are based on the links between advertising and IT or communication services. However, the reputation of the earlier mark has been proven not for IT services but for smartphones and specific software. Additionally, nowadays, a vast amount of services such as banking, training and entertainment are provided online, through software applications and available on smartphones. The link between smartphones/EMM software and the contested services in Class 35 is not sufficiently narrow and the opponent’s arguments not sufficiently convincing to establish that the applicant’s MAZEBERRY branded services in Class 35 may receive a boost resulting from the association that the public will make with the opponent’s reputed smartphones and software.

Given that the opponent could not establish that the use of the contested sign for the services in Class 35 would take unfair advantage of, or be detrimental to the distinctive character or repute of the earlier trade mark, the opposition is considered not well founded under Article 8(5) EUTMR for these services.

The examination on the grounds of Article 8(5) EUTMR proceeds only in respect of the contested services in Class 42.

e) Due Cause

As mentioned above, the applicant claims to have due cause for using the contested trade mark.

Interpreting Article 5(2) of Directive 89/104 (whose legislative content is essentially identical to that of Article 8(5) EUTMR), the Court ruled that the proprietor of a trade mark with a reputation might be obliged, pursuant to the concept of ‘due cause’ within the meaning of that provision, to tolerate the use by a third party of a sign similar to that mark in relation to a product that was identical to that for which that mark had been registered, if it was demonstrated that that sign was being used before that mark had been filed and that the use of that sign in relation to the identical product was in good faith (06/02/2014, C-65/12, Leidseplein Beheer and de Vries, EU:C:2014:49, § 60).

The applicant argues that it owns a French semi-figurative trade mark registered in 2010 and which has been used in good faith for nearly eight years before the filing of the opposition. Therefore, the marks at issue have been coexisting all this time. It relies on the case law mentioned in the previous paragraph in this respect (06/02/2014, C65/12 Leidseplein Beheer and de Vries, EU:C:2014:49, § 60). The applicant infers that the use of the ‘Mazeberry’ trade mark is justified by a legitimate interest. Furthermore, the applicant puts forward that its French trade mark was the subject of an opposition by the opponent on the basis of the BLACKBERRY trademark, which was rejected by the French office owing to the significant differences and the absence of a likely of confusion.

The applicant did not provide any evidence of use of the French mark in question on the market. Furthermore, the fact that the INPI rejected the opposition against the trade mark MAZEBERRY and based on the trade mark BLACKBERRY is not relevant in this case. The INPI excluded a likelihood of confusion between those marks whereas this opposition is (partially) upheld on the grounds of Article 8(5) EUTMR because the use of the contested sign, for some of the contested services, is likely to take unfair advantage of the reputation of the earlier mark.

In addition, the applicant refers to a French trade mark whose geographical scope of protection does not correspond to the territory covered by the trade mark applied for (16/04/2008, T‑181/05, Citi, EU:T:2008:112, § 48). The existence of that trade mark cannot establish a legitimate interest of the applicant in the whole European Union.

The applicant’s claims for due cause are, therefore, not well-founded.

f) Conclusion

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

Class 42: IT services.

The opposition against the remaining services in Class 35 is not successful under Article 8(5) EUTMR and must now be examined under Article 8(1)(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.

a) The goods and services

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

Class 9: Computer software; computer software for computing and communication devices in the nature of apparatus forrecording, transmission, processing or reproduction of data, sound or images, data processing equipment, and computers, and mobile computing and communication devices in the nature of mobile phones, smartphones, personal digital assistants (PDAs), tablet phones, tablet computers, mobile computers, and mobile apparatus for recording, transmission, processing or reproduction of data, sound or images; embedded computer software used as a feature found on the foregoing computing and communication devices and mobile computing and communication devices; downloadable software for the foregoing computing and communication devices and mobile computing and communication devices; mobile application software for the foregoing computing and communication devices and mobile computing and communication devices; operating system software for the foregoing computing and communication devices and mobile computing and communication devices; enterprise software for the foregoing computing and communication devices and mobile computing and communication devices.

Class 35: Retail store services in the field of computing and communication devices in the nature of apparatus for recording, transmission, processing or reproduction of data, sound or images, data processing equipment, and computers, and mobile computing and communication devices in the nature of mobile phones, smartphones, personal digital assistants (PDAs), tablet phones, tablet computers, mobile computers, and mobile apparatus for recording, transmission, processing or reproduction of data, sound or images, and goods therefor; the bringing together, for the benefit of others, of a variety of goods/services, enabling customers to conveniently view and obtain or purchase those goods, in the field of the foregoing computing and communication devices and mobile computing and communication devices, and goods therefor; online retail store services in the field of the foregoing computing and communication devices and mobile computing and communication devices, and goods therefor; the bringing together, for the benefit of others, of a variety of goods/services online, enabling customers to conveniently view and obtain or purchase those goods online, in the field of the foregoing computing and communication devices and mobile computing and communication devices, and goods therefor; and business consulting services in the field of the foregoing computing and communication devices and mobile computing and communication devices, and goods/services therefor.

Class 38: Telecommunications; instant messaging services; telecommunications services, namely, transmission of data, sound or images; telecommunications services, namely, transmission of GPS navigation, messages, texts, emails, notification alerts, status updates, documents, images, voice, music files, video files, audio files, audiovideo files, streaming media files, multimedia files, location information and paging information; telecommunications services, namely, providing access to data, sound or images; and telecommunications services, namely, providing access to GPS navigation, messages, texts, emails, notification alerts, status updates, documents, images, voice, music files, video files, audio files, audio-video files, streaming media files, multimedia files, location information and paging information.

Class 42: Technological services; technical support services, namely, troubleshooting in the nature of diagnosing hardware and software problems concerning computing and communication devices in the nature of apparatus for recording, transmission, processing or reproduction of data, sound or images, data processing equipment, and computers, and mobile computing and communication devices in the nature of mobile phones, smartphones, personal digital assistants (PDAs), tablet phones, tablet computers, mobile computers, and mobile apparatus for recording, transmission, processing or reproduction of data, sound or images, and goods/services therefor; installation, maintenance and repair of computer software for the foregoing computing and communication devices and mobile computing and communication devices, and goods/services therefor; cloud computing featuring software for use in the field of the foregoing computing and communication devices and mobile computing and communication devices, and goods/services therefor; software as a service (SAAS) services featuring software for use in the field of the foregoing computing and communication devices and mobile computing and communication devices, and goods/services therefor; social media and social networking services provided online or by means of the foregoing computing and communication devices and mobile computing and communication devices.

The remaining contested services are the following:

Class 35: Advertising, marketing and promotional services.

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.

In Class 35 the earlier mark is registered for, inter alia, business consulting services in the field of telecommunications/computing apparatus.

The opponent’s business consulting services in the field of the foregoing computing and communication devices and mobile computing and communication devices, in Class 35, are intended to help companies manage their business by setting out the strategy and/or direction of the company. They involve activities associated with running a company, such as controlling, leading, monitoring, organising, and planning and aim at enable those companies not only to carry out their business but also to acquire, develop and expand their market share.

The contested advertising, marketing and promotional services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and enabling them to acquire a competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by advertising companies, which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, websites, videos, the internet, etc.

When comparing business consultancy with advertising, marketing and promotional activities it should be noted that advertising is an essential tool in business management/business consultancy because it makes the business itself known in the market. As stated above, the purpose of advertising services is ‘to reinforce the business position in the market’ and the purpose of business management services is to help a business in ‘acquiring, developing and expanding market share’. There is not a clear-cut difference between ‘reinforcing a business position in the market’ and ‘helping a business to develop and expand market share’. A professional who offers advice regarding how to efficiently run a business may reasonably include advertising strategies in that advice because there is little doubt that advertising plays an essential role in business management. Furthermore, business consultants may offer advertising (and marketing) consultancy as a part of their services, and therefore the relevant public may believe that these two services have the same professional origin. Consequently, considering the above, these services are similar to a low degree (22/11/2011, R 2163/2010-1, INNOGAME / InnoGames, § 13-17).

It is noted that the opponent’s remaining goods and services are not more similar to the contested advertising, marketing and promotional services in Class 35. Indeed the contested services are dissimilar to those other earlier goods and services in Classes 9, 35, 38 and 42, as they are not manufactured/provided by the same companies or available through the same distribution channels. Furthermore, they do not coincide in their purposes or nature and are not complementary or in competition.

In particular, the contested services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, advertising is dissimilar to the goods or services being advertised. The contested services are also dissimilar to the opponent’s retail services. The latter are services around the actual sales of goods and their purpose is not the creation of a strategy for selling goods but to bring together a variety of particular goods enabling consumers to conveniently view and purchase them. Thus the natures and the purpose of the opponent’s retail services and of the contested promotional services are different. Furthermore, they are provided by specialised undertakings, distributed through different channels and are neither in competition nor complementary.

b) 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 services found to be similar to a low degree are directed at business customers with specific professional knowledge or expertise.

These services have a direct impact on the business operation, strategy and commercial results. The Court has established that, for such services, the relevant public mainly consists of professionals with a high level of attention (21/03/2013, T-353/11, eventer Event Management Systems, EU:T:2013:147, § 31).

c) The signs

The assessment of similarity should be made according to the same criteria in the context of Article 8(1)(b) EUTMR and in the context of Article 8(5) EUTMR, thus taking into account elements of visual, aural or conceptual similarity (23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 28, relating to the interpretation of Article 5(2) TMD; 24/03/2011, C-552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 52).

The signs have already been compared under Article 8(5) EUTMR, based, inter alia, on the distinctiveness of the elements of the signs, as perceived by the different sections of the public, in relation to the relevant goods and services.

Despite the fact that the relevant services are not the same in this comparison, the considerations previously set out in relation to the perception of the signs by the relevant public and the degree of distinctiveness of their elements are, on the whole, equally applicable and the ensuing conclusions as to the degree of the visual, aural and conceptual similarity of the signs are equally valid.

It is true that the element ‘BLACK’ of the earlier mark was considered a weak element in relation to smartphones, for the non-English-speaking public, when comparing the signs for the purposes of Article 8(5) EUTMR, whereas the same element is more distinctive in relation to business consultancy services, which enhances its importance as a differentiating element. However, the fact remains that ‘BLACK’ will be perceived as a qualifier and that the sequence of letters ‘BERRY’ at the end of the signs is a long one which the public will not fail to notice.

Therefore, the signs are considered visually similar to a below average degree, and aurally similar to an average degree for the entire relevant public. Conceptually, they are not similar for the non-English speaking public and similar to an average degree for the English speaking public on the basis of the coinciding concept of a ‘berry’.

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

d) Distinctiveness of the earlier mark

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

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation in relation to the relevant services of business consultancy.

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 the relevant services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (see judgment of 20/09/1998, C-39/97, ‘Canon’, paragraphs 17 and further.). The degree of attention of the relevant public is also a factor to be weighed in the assessment.

In the present case, considered cumulatively, the degree of similarity between the signs in question (below average visually, average aurally and, for part of the public, conceptually) is not sufficiently high for a highly attentive public to confuse the signs when used in relation to the services at issue which are similar to only a low degree, or to believe that those services are provided by the same or economically linked undertakings.

Therefore, in spite of the coincidence in the final part of the signs, there is no likelihood of confusion for the services in Class 35 and the opposition as based on Article 8(1)(b) EUTMR must also be rejected as far as it is directed against these services.

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Martina GALLE

Catherine MEDINA

Begoña URIARTE VALIENTE

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.