OPPOSITION No B 3 016 899

Microsoft Corporation, One Microsoft Way, Redmond, Washington 98052-6399, United States of America (opponent), represented by Wiggin LLP, 72-74 rue de Namur, 1000 Brussels, Belgium (professional representative)

a g a i n s t

Shenzhen CYX Technology Co., Ltd., A, 2/F, Bldg. 6, Guifa Industrial Park, Jianshe Rd., Longsheng Community, Dalang St., Longhua New Dist., Shenzhen, People’s Republic of China (applicant), represented by José Izquierdo Faces, Iparraguirre, 42 - 3º izda, 48011 Bilbao (Vizcaya), Spain (professional representative).

On 03/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 016 899 is upheld for all the contested goods.

2. European Union trade mark application No 17 235 417 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 235 417 for the word mark ´NEXBOX´, namely against all goods in Class 9. The opposition is based on European Union trade mark registrations No 1 611 235 and No 1 747 609 (both for the word mark ‘XBOX’), No 2 866 143 (word mark ‘XBOX LIVE’) and No 5 614 748 (word mark ‘XBOX’) and the non-registered trade mark used in the course of trade in the United-Kingdom ‘XBOX’. The opponent invoked Article 8(1)(b) and/or Article 8(5) EUTMR in relation to the registered trade marks. In relation to the non-registered trade mark, the opponent invoked Article 8(4) EUTMR.

PRELIMINARY REMARK

On 22/05/2019, the Opposition Division rendered a decision that resulted in partial refusal of the application due to likelihood of confusion. Specifically, the Opposition Division found that the opposition was unfounded on the basis of Articles 8(4) and 8(5) EUTMR, the latter one because most of the evidence related to the company Microsoft Corporation and not to the trade mark XBOX.

The decision was appealed, and the Board of Appeal issued a decision in case R 1564/2019-1 on 29/04/2020. The Board’s decision annulled the contested decision and remitted the case to the Opposition Division for further prosecution. The Board considered that due to the examiner’s mistake in analysing the wrong contested mark, the Boards have no reason to trust the remainder of the decision and therefore send the decision back to the Opposition Division for it to render a new decision. The Board found that it is possible that the evidence provided by the opponent is enough to prove reputation of its earlier rights without analysing the evidence in detail.

REPUTATION — ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier EUTM No 1 611 235, for which the opponent claimed reputation in the European Union.

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

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

 The signs must be either identical or similar.

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

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

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

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

a) Reputation of the earlier trade mark

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

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

In the present case, the contested trade mark was filed on 21/09/2017. 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 9: Video game players; electronic devices for accessing global computer and communication networks; computer hardware and peripherals; keyboards, joysticks, pointing devices; computer software for playing video games and for accessing and browsing global computer and communication networks.

The opposition is directed against the following goods:

Class 9: Computer peripheral devices; Data processing apparatus; Electronic agendas; Punched card office machines; Audio- and video-receivers; Cabinets for loudspeakers; Stands for photographic apparatus; Set-top boxes; Electrical inductors; Electrical distribution boxes; Electric cables; Network communication apparatus; Plugs, sockets and other contacts [electric connections]; Wire connectors [electricity]; Chargers for electric batteries; Camcorders; Portable media players; Laptop computers; Batteries, electric; Blank integrated circuit cards [blank smart cards].

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 10/07/2018 the opponent submitted, among others, the following evidence specifically in relation to the reputation of the earlier mark:

 Exhibit 1: ‘2017 Global Games Market Report’ issued by the company ‘Newzoo’, reporting on the size and the scale of the video games industry. According to the report, Germany, the UK, France, Spain and Italy are in the first 10 countries by game revenues in the world.

 Exhibit 2: ‘Year 2017 in Review’ issued by the company ‘Superdata’, reporting on the global games market.

 Exhibit 3: ‘Theatrical Market Statistics 2016’ report produced by the Motion Picture Association of America. The document contains information about a survey conducted among a sample of 3999 adults in January 2017. One of the questions also referred to the ownership of key technology products among adults 18 years of age where XBox was listed among the possible options to select from.

 Exhibit 4: ‘Global music report 2017’ issued by the International Federation of the Phonographic Industry in 2017, without any reference made to Xbox.

 Exhibit 5: ‘Videogames in Europe: consumer study (European Summary Report)’ issued by the Interactive Software Federation of Europe in 2012, giving, among others, figures on the number of gamers in different EU countries Poland, Portugal, the Netherlands, Spain, Italy, Great Britain, Finland, Germany, Belgium, Norway, Denmark, Sweden, France and Austria.

 Exhibit 6: Document issued by the company ‘Newzoo’, setting out statistics about the gaming market in different European countries from 2013 to 2017 (including with ranking of the respective markets in the world, number of gamers and total game revenues), quoting Xbox as being one of the consoles on which games are being played (i.e. ‘7 out of 15 UK tablet gamers also play games on a Xbox360’). Also, the document shows that in Sweden, Xbox One has 28% share plays RPG on console as compared with Playstation 4 owners (with 20%). The same information is given for the Netherlands where the share for Xbox is 48%.

 Exhibit 7: ‘UK video games fact sheet’ issued by the Association for UK Interactive Entertainment, giving the information about the global games market as well as the UK revenues of the game industry in 2017.

 Exhibit 8: A study in German, issued by BIU (Bundesverband Interaktive Unterhaltungssoftware) referring to the development of the German gaming market from 1995 to 2016 (XBOX is mentioned in the history of the game market). This Exhibit also contains a document titled ‘Die Computer-und Videospielindustrie in Deutschland’ issued in 2017 and created by the Hamburg Media School mentioning XBOX in the text.

 Exhibit 9: An article from Wikipedia about the 8th generation of video game consoles among which XBOX 360 is also mentioned.

 Exhibit 10: A selection of articles issued in 2002 referring to the launch of the XBOX in the United Kingdom and Germany.

 Exhibit 11: An article from Wikipedia about the 6^th generation of video game consoles, mentioning Microsoft XBOX consoles.

 Exhibit 12: An article from the website ‘Wired’ referring to the making of the Xbox gaming device in 2001 with which Microsoft (‘world’s largest publisher’) became a hardware manufacturer as well.

 Exhibit 13: Selection of five online articles (from the years 2002 and 2003), referring to the launch of the Xbox Live in France, Germany, Spain, Italy, Belgium, the Netherlands, the UK and Sweden.

 Exhibit 14: An article from Wikipedia about the 7th generation of video game consoles, among which Xbox 360 is also mentioned.

 Exhibit 15: An article of 20/04/2016 taken from the opponent’s website, referring to the 10 year anniversary of Xbox 360.

 Exhibit 16: selection of 13 online articles issued in the years from 2016 to 2017 taken from different websites such as www.eurogamer.net, www.mobilegeeks.de, www.hitek.fr, www.wired.co.uk, www.ign.com, www.telegraph.co.uk, etc. referring to the launch of Xbox One S and Xbox One X home consoles in different EU countries. Some of the articles mention Xbox One X console as Microsoft’s most powerful games console ever.

 Exhibit 17: screenshots of the official Xbox Website showing various XBOX products (consoles, accessories such as headsets, controllers, charge kits, battery packs, adapters, etc) and extracts from WayBackMachine showing different websites or partners of the opponent offering the products for purchase.

 Exhibit 18: Microsoft Annual Reports for the years 2012 - 2017. In the report for 2017, for example, it is mentioned that in 2017 there were more than 53 million active members on Xbox Live platform (a platform which enables people to connect and share online gaming experiences and is accessible on Xbox consoles) and that in 2013 Microsoft released Xbox One in November 2013, Xbox One S in August 2016 and Xbox One X in June 2017. The report also states that gaming revenue decreased slightly (21%) due to Xbox hardware revenue, offset in part by a higher revenue (11%) from Xbox software and services. In terms of revenue from external customers, classified by significant product and services offerings for 2017, Xbox is classified third.

 Exhibit 19: A report produced by the company ‘VGChartz’ in 2018 showing information on total worldwide sales per platform. In Europe, the Xbox 360 and Xbox are respectively ranked (tie ratio) first and fourth with 10.90 and 9.20 millions of units sold and Xbox One as 14^th with 7,57 million units sold in Europe. On the last page however it is made clear that the XBOX ranks second after the PlayStation.

 Exhibit 20: Selection of online articles taken from different websites (e.g. www.economist.com, www.gamesindustry.biz) and also from WayBackMachine platform in the years from 2002 until 2016. The articles refer to the sales of Xbox Consoles. For example, articles from 2004 refer to figures from the opponent showing that Xbox holds second place in Europe. Furthermore, more recent articles (e.g. from 2014) report that Xbox One has made incredible sales in that year and an article from 2016 compares Xbox to two rivals (PS4 and Wii U).

 Exhibit 21: Screenshots of the opponent’s website, depicting different Xbox accessories and hardware (e.g. Xbox headsets, controllers, remote controls, sensors, game drives).

 Exhibit 22: Undated pictures of Xbox products (consoles and controllers).

 Exhibit 23: Selection of online articles taken from different websites (www.eurogamer.net, www.nypost.com, www.bbc.com, www.telegraph.co.uk, www.fastcompany.com), referring to the launch of the Kinect sensor unit for Microsoft Xbox 360 games console in 2010 (in the 2011 edition Gamer´s Edition Guinness world record for fastest selling consumer electronics device on record).

 Exhibit 24: Selection of screenshots from Microsoft store website and from WayBackMachine (showing different websites where Xbox games are available to be purchased), depicting different games to be played with Xbox.

 Exhibit 25: Undated pictures of the Xbox One products, packaging, screens and warranty guides.

 Exhibit 26: Print-out from www.vgcharz.com, showing the information about the lifetime and worldwide sales of video games which are played on the Xbox console.

 Exhibit 27: Print-out from www.vgcharz.com showing the information about the best-selling games on all platforms from 2006 to 2017 in Europe.

 Exhibit 28: Print-out from the opponent’s website showing the Xbox Games catalogue.

 Exhibit 29: Print-out from the website www.chart-track.co.uk showing a selection of video game charts in the UK for a week in 2017. In this chart Xbox is mentioned as one of the available platforms. The exhibit also provides such information for France, Germany, Spain and Italy where Xbox games and Xbox platform are also mentioned.

 Exhibit 30: UK Market Briefing 2014 by the Entertainment Retailers Association in 2014 where the Xbox software revenues appear among the leaders on the market.

 Exhibit 31: Screenshots from WayBackMachine showing the best-selling video games on Amazon in France, UK, Spain, Italy and Germany from 2015 to 2017, where some video games playable on a Xbox console are in the top 15.

 Exhibit 32: Selection of articles referring to the sale of Xbox games in the years 2004-2015.

 Exhibit 33: Sales figures of Microsoft’s video game series ‘Halo’ in Europe, from 2009 to 2018. This evidence was declared as confidential, therefore, no concrete data will be divulged in this decision.

 Exhibit 34: Fact sheet of Microsoft’s video game series ‘Halo’ from 2009 to 2018 in the United States of America and Europe.

 Exhibit 35: Sales figures of Microsoft’s video game series ‘Gears of war’ in Europe from 2009 to 2018.

 Exhibit 36: Screenshots of Xbox Live official website, dated 2016.

 Exhibit 37: Articles on the number of Xbox Live users from 2004 to 2013 with a peak of 46 million of users.

 Exhibit 38: Selection of three articles from 2017 referring to the Xbox at trade fairs, with the Microsoft Xbox press conference Gamescom 2017 video watched more than 100 000 times on YouTube. By way of example, the EGX event is labelled as The UK´s biggest ever games event.

 Exhibit 39: Retailer annual reports dated 2017 and providing examples in UK and Spain, where it is said that video game hardware grew by 28%, driven by innovative new consoles including the Xbox One X. Xbox is mentioned among the main competitors on the market.

 Exhibit 40: Retailer in-store photographs, showing Xbox video games stands.

 Exhibit 41: next document State of the Game Industry 2017 report from of Electronic Arts. Inc (a company that develops, publishes and distributes games that can be played on several platforms which include Xbox consoles), stating that 22% of the Games Developers Conference attendants are currently developing games for this platform (but without any numbers dedicated to Europe). There are also other documents in this Exhibit – Take-Two Interactive Software, Inc. Report with further references to XBOX: the Summary Annual Report 2016 of THQ Nordic and from Ubisoft.

 Exhibit 42: ‘2016 state of the European industry report (Game Developers Conference)’, stating that 27.67% of the developers attending this conference think that Xbox One is one of the most popular platforms to make games for.

 Exhibit 43: Selection of articles on awards (such as Game of the Year) won by Xbox games in 2015 and 2016.

 Exhibit 44: An article of 17/11/2016 taken from the website www.rollingstone.com reporting on the 50 most iconic video game characters of the 21st century where Master Chief from the ´Halo´ series of Xbox is mentioned; further examples of high rankings of this video game character.

 Exhibit 45: Print-out from the official Xbox website referring to its Live TV in France, UK and Germany as well as a selection of online articles.

 Exhibit 46: Screenshots from the opponent’s website and from further websites referring to Xbox software applications in 2013 - 2016, stating that BBC, Netflix and Amazon are partnering with Microsoft in order to enable users to watch videos with their Xbox console.

 Exhibit 47: Xbox website traffic statistics worldwide, stating, for example, that in 2016 Xbox.com was ranked 839 in the world (Alexa Traffic Rank), with 563,500 unique visitors per day (39.6% of the page views come from the United States of America whereas 19.2% belong to European viewers – a breakdown for Germany, the UK, Spain, Italy, etc. is available).

 Exhibit 48: Screenshot taken in 2016 of the Xbox apps, with, for instance, 213,369 downloads worldwide for the Xbox app.

 Exhibit 49: An article from Wikipedia about eSports in 2018, stating that with the Xbox and the PlayStation one can play and participate in eSports events.

 Exhibit 50: Screenshots of streaming platforms featuring Xbox (Twitch, Mixer and YouTube), referring, inter alia, to the 2 millions subscribers to the Xbox YouTube page in 2018.

 Exhibit 51: 2017 Report from Newzoo providing an overview of e-sports in Europe.

 Exhibit 52: Compilation of references to 'Xbox' on eSports websites in 2018, where some games/events are only played on the Xbox platforms.

 Exhibit 53: Screenshots of the official pages of Xbox on social media, showing that in 2018 there are 23 millions of users from all over the world who like the Xbox Facebook page, and 12.9 millions for the Xbox Twitter page.

 Exhibit 54: Selection of articles depicting the Xbox marketing campaigns from 2002 to 2015 in Europe, for example an article in game zone from 2002 stating that an ad for Nexbox won a bronze lion in the category of best creative films or an article from the Liverpool Football Club from 2013 stating that Stephen Gerrard starred in an XBOX advert.

 Exhibit 55: Articles and statistics on Xbox marketing activities and global expenditure in 2001, 2002, 2003 and 2011, stating, inter alia, that more than 500 millions of dollars were spent on Xbox launch.

 Exhibit 56: Selection of articles about Xbox launch events in 2002, stating inter alia that a survey demonstrated that 63% of audience awareness was achieved after the launch, against 14% five months prior to the launch.

 Exhibit 57: Selection of articles on Xbox 360 supply shortages in 2005; it is reported, inter alia, that Xbox 360 launch took Europe by storm and that ´thousands of gamers queued up at stores in the 16 European launch countries´.

 Exhibit 58: Articles from BBC News, The Independent, the opponent’s website, Bitgamer, T3N, L’Usine Digitale and CNET referring in part to the Xbox One launch in 2013, where thousands of fans attended this event in London. The Leicester Square was renamed ‘Xbox One Square’ for a day.

 Exhibit 59: Wikipedia article referring to the 'Official Xbox Magazine', stating inter alia that in 2007, there was a ‘Best Xbox Magazine’ category at the Games Media Awards.

 Exhibit 60: Publications with information about industry and marketing awards given to the opponent mostly for the advertising campaigns in the years 2012 until 2016.

 Exhibit 61: A list of the opponent’s trade mark applications and registrations around the European Union.

 Exhibit 62: A copy of Opposition decision B 948 259 issued by the EUIPO from the year 2008.

 Exhibit 63: A decision by the Tribunal de Grande Instance de Paris in an invalidity case issued in the year 2007 acknowledging that XBOX had reputation for goods in Class 9.

 Exhibit 64: A copy of Opposition decision B 2 696 410 by the EUIPO from the year 2017.

 Exhibit 65: Table of Microsoft's enforcement strategy and activities with previous opposition cases from 2002 to 2004 as well as a summary of the opponent´s domain name disputes in relation to the Xbox brand.

Further, the opponent provided evidence mostly with regard to the Microsoft Corporation and to the applicant, which can be listed as the following:

 Exhibit OPP1: The extract from the opponent’s website which among others provides information about the history of Microsoft company founded in 1975. According to the extract Microsoft launched Xbox on 15/11/2001, on 22/11/2005 the company launched Xbox360 and on 04/11/2010 Kinect for Xbox360. Furthermore, according to the information provided in the document, on 21/05/2013 Microsoft unveiled Xbox One which was then launched on 22/11/2013. The document also shows that Xbox has its own logo .

 Exhibit OPP2: Documents extracted from WayBackMachine providing information about the ‘World’s Most Valuable Brands in 2017’ among which Microsoft is listed as third and ‘Best Global Brands 2016’ where Microsoft is on 4^th place.

 Exhibit OPP3: Screenshots from the applicant’s website www.inexbox.com providing information about NEXBOX. According to the document provided, NEXBOX is a leading brand in Android IPTV set-top box for internet streaming, along with free movies. The screenshots also show examples of TV boxes under a trade mark NEXBOX.

 Exhibit OPP4: Contact information about the applicant’s company

 Exhibit OPP5: NEXBOX online listings of products available for sale on different websites such as www.amazon.co.uk, www.ebay.com,

 Exhibit OPP6: Screenshots from Microsoft Windows website, providing information about the Microsoft products. The application for X-box is visible on several computers and tablets.

 Exhibit OPP7: Pictures of NEXBOX Products

 Exhibit OPP8: a selection of online listings where the applicant’s goods are available for sale.

 Exhibit OPP9: information about the XBMC foundation and about the Xbox MediaPlayer.

 Exhibit OPP10: decision of the Opposition Division B 2 696 410 of 25/04/2017

 Exhibit OPP11: definition of the verbal element live

 Exhibit OPP12: articles defining media convergence

 Exhibit OPP13-14: example of technical convergence

 Exhibit OPP15: decision of the High Court of Justice (UK) YouView TV Limited/Total Limited

 Exhibit OPP16: The law of passing off

It is clear from the evidence that the earlier trade mark has been subject to long-standing and intensive use and is well known in the relevant market, where it enjoys a consolidated position among leading brands, at least for video game players in Class 9.

Although some of the documents submitted (e.g. some press articles) are almost 20 years old, the evidence as a whole suggests that the recognition of the mark ‘XBOX’ in the field of video game consoles is well established and remains until the recent days.

The evidence indicates that the earlier trade mark has been used for a substantial period of time. The earliest sources are dated back to 2002 when Microsoft issued its first Xbox console which attracted huge crowds to shops. Although many documents refer to the world wide success of the earlier trade mark, some of the documents also specifically refer to the success of it in the EU territories (i.e. exhibit 6 which reports that in 2013 ‘7 out of 15 UK tablet gamers also play games on a XBbox360’ and make a reference to the use of Xbox consoles in the territory of Sweden and the Netherlands.

The evidence as a whole shows that the earlier sign has received extensive coverage in the press and has been the subject of advertising platforms and campaigns, leading to a significant exposure of the public to the sign, as it is continually mentioned in press sources and social media platforms. The evidence indicates continued use of the earlier trade mark and even commercial success of it not only in the years after the first launch of consoles but also in the more recent years i.e. in 2016 and 2017 when new Xbox consoles were introduced in the market (Exhibit 16). Although the remaining evidence that is closer to the filing date of the contested mark refers more to different XBOX games and the Xbox platform as variations of the sign with less distinctive additions as One, 360 or Live are added, it can be seen from the evidence relating to the relevant market in the EU and worldwide that Xbox is one of the major competitors and among the leaders.

In view of the above, the evidence submitted allows the conclusion that the earlier trade mark enjoyed, close to the relevant date, a degree of recognition among the public in the European Union, which is sufficient to establish strong reputation at least for video game players. The turnover figures, the market shares and the various references in the press articles to the success and leading position of the mark ‘XBOX’ unequivocally demonstrate that it has a consolidated position in the market of the European Union.

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 in question, the relevant consumers, etc.

On 21/10/2020 the opponent filed further submissions requesting the Opposition Division to take into account the judgment C-449/18 (Messi/EUIPO) that reputation in the European Union can also be a well-known fact.

At this point, the Opposition Division deems it unnecessary to examine whether or not the it may exercise the discretion conferred on it by Article 95(2) EUTMR to take into account the additional submissions, as the evidence submitted within the time limit is sufficient to prove the reputation of the earlier trade mark.

b) The signs

XBOX	NEXBOX
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).

In the present case a part of the relevant public will recognise the element ‘BOX’ included in both signs. It will be understood as ‘a container’ (e.g. the German- and English-speaking public), due to the existence of this word in the respective languages. For some of the goods, such as data processing apparatus in the contested mark and the opponent´s video game players which could be in the form of a box or offered in a box, this element is considered to be non-distinctive. In other languages, for example for the Spanish or Bulgarian-speaking parts, this element has no meaning and it is unlikely that the consumer will even split the marks. Therefore, for this part of the public ‘BOX’ or XBOX as a whole (if the mark is not split) will be distinctive to an average degree. As to the letter ‘X’ (again if singled out) although it has several meanings, ‘x’ as such will not be perceived as having any direct meaning in relation to the goods in question. It is, therefore, distinctive per se. The same is valid for the beginning ‘NEX’ of the contested mark which is also meaningless and therefore distinctive to an average degree.

Visually, the signs coincide in the letters ‘XBOX’, while they differ in the additional initial letters “NE” in the beginning of the contested sign. Despite the distinctiveness´ issues of the element ´BOX´ from the perspective of a part of the public and that the differences between the signs are in their beginning to which consumers normally pay more attention, still on account of the coincidences in the string of letter ´XBOX´ (i.e. the earlier mark in its entirety), the signs a visually similar, even if not more than to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs is similar on account of the coinciding string of letters ‛XBOX’, present identically in both signs. While in some languages, for example in German, there are more markable differences in the pronunciation of the beginnings (the earlier mark will be pronounced “IKS-BOKS” and the contested one “NEKS-BOKS”) and there are distinctiveness issues of the element ´BOX´, still overall the signs are aurally similar, even if to a no more than average degree.

Conceptually, neither of the signs has a meaning as a whole. For part of the public, the coinciding word ‘BOX’ will evoke a concept which, however, in such case will not be attributed trade mark significance in relation to the opponent´s goods and cannot lead to a relevant conceptual similarity.

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

As already established, the earlier mark ‘XBOX’ is a reputed mark in the European Union at least for video game players.

The verbal elements of the signs, ‘XBOX/NEXBOX’, coincide in the majority of their letters/sounds, as explained above. Therefore, these commonalities between the sole verbal elements of the signs, which as a whole are distinctive for the goods at issue, are of material importance when assessing the ‘link’ between the conflicting marks.

Even considering that the similarities are not higher than average, it should be remembered that the degree of similarity of the signs required under Article 8(5) EUTMR differs from the one required under Article 8(1)(b) EUTMR. Thus, whereas the protection provided for under Article 8(1)(b) EUTMR is conditional upon a finding of a degree of similarity between the marks at issue such that there is a likelihood of confusion between them on the part of the relevant section of the public, the existence of such a likelihood is not necessary for the protection conferred by Article 8(5) EUTMR. Accordingly, the types of injury referred to in Article 8(5) EUTMR may result from a lesser degree of similarity between the marks in question, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them (see judgment of 24/03/2011, C‑552/09 P, TiMiKinderjoghurt, EU:C:2011:177, §  53 and the case-law cited therein).

The contested goods are the following:

Class 9: Computer peripheral devices; Data processing apparatus; Electronic agendas; Punched card office machines; Audio- and video-receivers; Cabinets for loudspeakers; Stands for photographic apparatus; Set-top boxes; Electrical inductors; Electrical distribution boxes; Electric cables; Network communication apparatus; Plugs, sockets and other contacts [electric connections]; Wire connectors [electricity]; Chargers for electric batteries; Camcorders; Portable media players; Laptop computers; Batteries, electric; Blank integrated circuit cards [blank smart cards].

The contested data processing apparatus; network communication apparatus are identical or overlap with the goods for which reputation has been proven (i.e. video game players); other contested goods, namely computer peripheral devices; audio- and video-receivers; set-top boxes; portable media players; laptop computers; camcorders, are at least similar to varying degrees to the opponent’s video game players as they share at least the same relevant public, distribution channels and producers. The remaining contested goods electronic agendas; punched card office machines; cabinets for loudspeakers; stands for photographic apparatus; electrical inductors; electrical distribution boxes; electric cables; plugs, sockets and other contacts [electric connections]; wire connectors [electricity]; chargers for electric batteries; batteries, electric; blank integrated circuit cards [blank smart cards] also have some points in common with the opponent’s video game players as they are all electronic goods or goods which are closely related to electronic goods. Even if no similarity can be stablished between all contested goods and the opponent´s relevant goods, as seen from the evidence submitted by the opponent, the reputed goods are intrinsically linked to the wider range of products (see, for example, Exhibits 17, 21 – 23, as well as Exhibits Opp 12-14 in relation to media and technological convergence). In the light of the above findings it is likely that consumers who encounter the contested trade mark in the context of all the contested goods in Class 9 will be prompted to establish a link to the opponent´s reputed mark.

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 use of the contested trade mark would take unfair advantage of and would be detrimental to the repute of the earlier trade mark.

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free‑riding on the coat‑tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following.

 The contested trade mark also takes unfair advantage of the repute of the opponent’s trade mark which enjoys reputation. By using a highly similar trade-mark, the applicant exploits its image and prestige, and takes a ‘free-ride’ on the opponent’s investment in promoting and building-up goodwill for its mark. It also exploits, without paying any financial compensation, the marketing effort of the opponent expended in order to create and maintain the image of its trade marks.

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.)

Taking into account that the earlier mark is inherently distinctive, that the opponent has built up certain goodwill and reputation in its earlier mark, and that the signs are similar to an extent which is not insignificant, it is concluded that consumers of the contested goods will make a connection between the marks – an association that will produce a commercial benefit for the applicant.

The ‘reputation’ of the earlier mark, conveying the positive message as set out above, that will be transferred to the contested sign in the minds of the consumers could positively influence, without any marketing efforts or investment made by the applicant, the choice of those consumers as regards the contested goods offered under the contested sign vis-à-vis those offered by other producers.

In this respect, the Opposition Division concurs with the opponent´s arguments that there is a risk that the applicant would be unfairly capitalising on the recognition and reputation of the earlier mark and that the applicant may achieve a ´springboard to success´ without having invested its own fund and efforts. This conclusion is further supported by the evidence submitted by the opponent on the link between the applicant’s goods and the use of software previously known as ‘Xbox Media Centre’ (see Exhibit OPP9).

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the repute of the earlier trade mark.

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

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.

e) Conclusion

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.

Given that the opposition is entirely successful under Article 8(5) EUTMR, it is not necessary to examine the remaining grounds and earlier rights on which the opposition was based.

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, 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

Denitza STOYANOVA-VALCHANOVA

Lars HELBERT

Konstantinos MITROU

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.