OPPOSITION No B 3 051 059

Allegro.pl Spółka z ograniczoną odpowiedzialnością, Grunwaldzka 182, 60-166 Poznań, Poland (opponent), represented by Bartosz Mariusz Fert, ul. Mikołaja Kopernika 4a/16b, 61-880 Poznań, Poland (professional representative)

a g a i n s t

Sapir Polska Sp. z o.o., Al. Krakowska 30 A Janki, 05-090 Raszyn, Poland (applicant), represented by Aomb Polska Sp. z o.o., Emilii Plater 53, 21st floor, 00 113 Warszawa, Poland (professional representative).

On 25/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 051 059 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 311 515 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 and services of European Union trade mark application No 17 311 515 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 9 759 788 for the word mark ‘ALLEGRO’ in respect of which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier European Union trade mark registration No 9 759 788, for which the opponent claimed repute in the EU.

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

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

• The signs must be either identical or similar.

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

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

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

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

1. Reputation of the earlier trade mark

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

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

In the present case, the contested trade mark was filed on 11/10/2017. 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 relating to the operation of an online marketplace.

Class 35: Operating an online marketplace for the negotiation of commercial transactions between third parties in the selling and purchasing of goods; providing online advertising space for others; classified advertising services; providing online classified advertising space; advertising and promotional services; price comparison services; information services relating to the aforesaid services.

The opposition is directed against the following goods and services:

Class 11: Lamps for lighting purposes; illumination; apparatus for heating; steam generating apparatus; cooking appliances; refrigerating apparatus; drying installations; apparatus for ventilating; apparatus for water supply and sanitary purposes; water closets; wash-hand bowls [parts of sanitary installations]; bidets; showers; bathtubs; hydromassage showers and bathtubs; shower units; bath and kitchen taps; kitchen ranges; gas cookers; electric ranges; exhaust air collection hoods; sinks; apparatus for eliminating odours, not for personal use; electric cooking pots for household purposes; pressure cookers, electric cooking pots; coffee and hot-drink making apparatus utilising steam; milk frothing apparatus utilising steam; coffee makers; percolators (coffee- ), electric; electric kettles; electric ovens; microwave ovens; refrigerators; shower fittings and flexible bathroom hoses; fittings for washbasins and sinks, and for baths and showers; sanitary fittings; shower pans; toilet bowls; urinals [sanitary fixtures]; connection fittings; mixer fittings, water supply fittings; regulating accessories and taps; wall brackets; syphons; water-supply apparatus; showers; shower fittings and flexible bathroom hoses.

Class 21: Dishes; decorative objects and works of art of glass, porcelain or material similar to porcelain, glassware for household purposes; soap containers for attaching to walls or furniture; toilet roll dispensers; towel racks; holders and units for bath and toilet utensils; tableware, namely bread baskets, butter dishes, sugar bowls and cruet stands for vinegar and oil; basins [bowls], candlesticks, baskets for domestic use, pepper mills and salt cellars; napkin holders, tea caddies, tea kettles, coffee pots, trays and table decorations, all the aforesaid goods of glass, porcelain or porcelain-like material; dustbins; dusting apparatus, non-electric; beer mugs; flower pots; boxes for sweetmeats; brushes (not paint brushes); autoclaves, non-electric, for cooking; egg cups; chopsticks for sushi; brushes, electric (except parts of machines); comb (electric); bottle openers, electric and non-electric; flasks; bottles; figurines; figurines (statuettes) of porcelain, terracotta and glass; non-electric frying pans; fruit presses, non-electric, for household purposes; vegetable dishes; glass bowls; griddles [cooking utensils]; gridiron supports; blenders, non-electric, for household purposes; insulating flasks; crystal [glassware]; coffee sets; cheese-dish covers; cookie jars; ceramics for household purposes; pitchers; decanters; candlesticks; waste bins for household use; cake moulds; works of art, of porcelain, terra-cotta or glass; kitchen vessels; cooking pot sets; moulds (kitchen utensils); combs and sponges; garlic presses [kitchen utensils]; cooking pots; cooking pot sets; knife rests for the table; shakers, non-electric kitchen mills; mills for household purposes, hand-operated; noodle machines, hand-operated; fruit cups; glasses, drinking vessels and barware; hand-operated cleaning implements; beaters, non-electric; stirring spoons (for kitchen use); cocktail stirrers; fitted picnic baskets (including dishes); lunch boxes; soap boxes; soap dispensers; menu card holders; salad bowls; basins [bowls]; pan-mats, soup bowls; lazy susans; shakers; scrapers (kitchen implements); scoops for household purposes; sifters (household utensils); tea caddies; tableware, other than knives, forks and spoons; services [dishes]; tea services [tableware]; meal trays; crockery; pottery; cups; teapots; plates; drinking vessels; beverage glassware; saucers; vases; lanterns (decoration); wall soap dishes; toothbrush holders; dusting apparatus, non-electric; mugs; flower pots; bread bins; brushes (not paint brushes); painted glassware; deodorising apparatus for personal use; buckets; egg cups; oil cruets; chopsticks; vegetable dishes; spice sets; household or kitchen utensils and containers (not of precious metal or coated therewith); griddles [cooking utensils]; gridiron supports; table napkin holders; kitchen containers; crystal [glassware]; coffee sets; cheese-dish covers; cookie jars; decanters; baskets for household purposes; works of art, of porcelain, terra-cotta or glass; kitchenware, cooking pot sets; glass cookware; un-worked or semi-worked glass (except glass used in building); fitted picnic baskets (including dishes); porcelain and earthenware; articles for cleaning purposes; cutting boards for the kitchen; napkin rings; sieves (household utensils); services [dishes]; waffle irons, non-electric; kettles, non-electric; decorative objects and works of art of glass, porcelain or material similar to porcelain; pots.

Class 35: Retailing, wholesaling, catalogue sale, sale via online shops, sale via mail order and all kinds of sale of the following goods: lighting, hand tools, household appliances, cutlery, forks, spoons, razors, shavers, barbecue cutlery, nutcrackers, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, barbecues and barbecue accessories, bathroom fittings, home furnishings, tableware, furniture, mirrors, picture frames, household goods, articles for cleaning purposes, glassware, porcelain, wall decorations, horticultural goods, textiles and textile goods, bed covers, tablecloths, towels, household linen, artificial flowers, carpets, rugs, door mats, linoleum, materials for covering existing floors, wallpaper, bath mats.

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 30/11/2018, the opponent submitted the evidence. 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, in particular, of the following documents:

• Reports concerning ‘E-commerce in Poland’ carried out by the company Gemius under the auspices of the Ministry of Economy of the Republic of Poland for four consecutive years, namely 2015-2018. According to these reports, 76% of Polish e-consumers in 2015, 69% in 2016, 71% in 2017 and 72% in 2018, when asked to name any e-commerce websites, mention the platform allegro.pl without prompting (spontaneous awareness). The studies have been carried out with dynamic CAWI (Computer-Assisted Web Interview) surveys randomly displayed on websites with a total coverage of over 90% Polish Internet users. Each analysis was based on 1500 interviews of Internet users aged 15 and above (appendix 9).

• Printout of the Gemius’ website showing graphic on the Allegro’s position in comparison to its competitors for 2016: ‘ALLEGRO’ was ranked the 1^st e-commerce website.

• Copy of the extract from Google Analytics, according to which from 1/09/2018 till 30/09/2018 the website allegro.pl was visited by 33 814 290 users from Poland. The number of sessions (interactions) of Polish users amounted to 172 034 767 (appendix 14).

• Copy of the extract from Alexa, according to which the opponent’s website allegro.pl was ranked 5th among Polish most used online websites in terms of popularity measured by number of visitors to the website, and was ranked 290th worldwide (appendix 15).

• Copies of extracts from the social media. According to the opponent, its YouTube channel has been viewed over 94 million times. The channel is subscribed to by nearly 175 500 registered users and the videos uploaded on the channel reach 15 millions views. Also, Allegro’s accounts on Instagram have nearly 25 000 followers, its account on Twitter – 12 000, and its LinkedIn profile is followed by over 7 000 users.

• Printouts of the Internet website payU.pl according to which about 40% of the amount of online purchases in Poland corresponds to the opponent’s website at allegro.pl.

• An extract from the internet website at smartcookies.pl indicating that Allegro’s share in the Polish e-commerce market corresponds to 37% (approximately 35 billion PLN).

• Extracts of the opponent’s internal financial statement for the period 28/07/2016 – 31/12/2017.

• An extract including a statement of the opponent’s employee concerning advertising expenses for the ‘ALLEGRO’ trade mark for the years 2015-2017.

• Extracts of the opponent’s corporate social responsibility report for 2017 concerning social, employee and environmental issues that the opponent is involved in.

• Wikipedia’s extract and press releases concerning the series of short films ‘Polish Legends’ produced by the opponent and available on YouTube.

• Extracts concerning the opponent’s advertisement ‘What are you looking for on Christmas? English for beginners’. The opponent claims that until 17/10/2018 it was viewed over 15 million times.

• Extracts from the Internet websites (for example, www.rmfmaxxx.pl; www.kultura.gazeta.pl) confirming that the Allegro’s advertisement ‘What are you looking for on Christmas?’ was awarded on the Cannels’ advertising festival, Cannes Lions, with a brown lion in 2017.

• Extracts of the online magazine ‘Magazyn Allegro’ that contains, among other, book reviews, fashion news and reports from events organised by Allegro. According to the opponent, ‘Its aim is to build a strong and positive brand image and to encourage readers to visit auctions listed on the platform allegro.pl.’

• Copies of the following Superbrands Certificates for ‘Allegro’: Superbrands 2015/2016 and Created in Poland Superbrands 2015/2016; Superbrands 2016/2017 and Created in Poland Superbrands 2016/2017; Superbrands 2018 and Superbrands Polish Brand 2018. According to the information on the Superbrand’s website: ‘Superbrands is the world’s largest independent arbiter of branding. Superbrands pays tribute to the strongest and most valuable brands in the world through its publications and national marketing programs’.

• Extracts from the Internet website ‘Dziennik Internautów’ referring to the award for Allegro granted by the Research and Academic Computer Network (NASK) for ‘promoting the development of information society’. It states the following: ‘Allegro.pl is the biggest online transaction platform in the Polish Internet and has created a community of over 5 million users who communicate with each other over the Internet – and often also in person’ (appendix 45).

• Press articles referring to price of nearly 13 billion PLN for which the platform allegro.pl, together with the opponent’s platform ‘Ceneo’, was sold to a group of investment funds. It is said to be one of the largest online transactions in Poland (appendix 48).

• Extracts of the Internet website mix-wawrds.pl referring to the award received by Allegro in 2016 in the categories: ‘Brand Awareness and positioning’, ‘Branded content’, ‘video on-line’ and the ‘best advertising campaign of the year 2016’ for the ‘Polish legends’; in 2015 for the advertisement ‘Allegro Święta 2015’; for 2017: ‘Brand Awareness and positioning’, ‘Branded content’, ‘video on-line’ for the ‘Polish legends’.

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.

The opponent states in the ‘Legal opinion concerning the reputation of trade marks owned by Allegro.pl sp. z o.o.’ that the opponents’ trade mark has achieved enormous recognition on the Polish market in relation to the following services: Operating an online marketplace for the negotiation of commercial transactions between third parties in the selling and purchasing of goods.

From the submitted evidence, it can be concluded that the earlier mark enjoys reputation which is significant in Poland for the above mentioned services. The evidence shows that the earlier mark has been granted a high brand rating as well as prizes awarded by prestigious entities in Poland in the relevant period. According to the reports conducted by Gemius, the spontaneous awareness (Computer-Assisted Web Interview’s answers to the question ‘Please name up to three platforms related to online shopping, which comes to you in the first place’) for the trade mark ‘ALLEGRO’ varies between 69 and 76% from 2015 until 2018. The TOM awareness (the first mentioned of spontaneous awareness) varies between 55 and 60%. According to the report, the opponent’s trade mark is ranked the ‘1^st’ online shopping platform. Furthermore, from the articles submitted it follows that the ‘ALLEGRO’ platform represents 30% of the total value of all online purchases made by the Polish consumers. Therefore, these facts constitute a persuasive evidence of recognition of ‘ALLEGRO’ amongst the relevant public.

The Opposition Division notes that some evidence submitted (in particular, the report concerning ‘E-commerce in Poland’ dated 2018, extracts from Google Analytics and Alexa) post-dates the filling date of the contested application. However, given that reputation is usually built up over a period of years and cannot simply be switched on and off, documents bearing a later date cannot be denied evidential value and conclusions have to be drawn taking into account the rest of the evidence submitted.

Also, it is noted that some pieces of evidence (for example, the marketing expenditures, or the financial statements) emanates directly from the opponent. However, the evaluation of the evidence as a whole shows that there is sufficient objective information from third parties to reflect clearly and objectively what the opponent’s ‘ALLEGRO’ mark’s position on the market precisely is. In particular, the evidence including the rankings and the Superbrands awards are independent and objective evidence which on the whole corroborate the assertions made by the opponent. Therefore, the leader position in the market, combined with a high degree of trade mark awareness, is considered a strong indication of reputation of ‘ALLEGRO’ for the above indicated services. On the other hand, the evidence submitted does not include any relevant information which could allow the level of brand awareness of the ‘ALLEGRO’ trade mark for other than the above-mentioned services to be determined.

As such, the evidence submitted by the opponent is sufficient in itself to prove conclusively the substantial degree of recognition of the ‘ALLEGRO’ mark amongst the relevant public. In this context it must be noted that according to the Court ‘a Community trade mark must be known by a significant part of the public concerned by the products or services covered by that trade mark, in a substantial part of the territory of the European Community, and that, in view of the facts of the main proceedings, the territory of the Member State in question may be considered to constitute a substantial part of the territory of the Community’ (06/10/2009, C-301/07, Pago, EU:C:2009:611). In view of the current circumstances, the Opposition Division considers that the reputation proven in Poland can be considered to constitute a substantial part of the European Union.

On the basis of the above the Opposition Division concludes that the earlier trade mark has a reputation in Poland, thus the European Union for Operating an online marketplace for the negotiation of commercial transactions between third parties in the selling and purchasing of goods.

2. The signs

ALLEGRO
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C 514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, unfair advantage established for only part of the relevant public of the European Union is sufficient to reject the contested application. As the reputation of the earlier sign has been established in Poland, the Opposition Division finds it appropriate to focus the comparison of the signs on the public in this territory.

The verbal elements of the signs will not be associated with any meaning in relation to the goods and services at issue and, therefore, their distinctiveness is average.

As regards the stylisation of the contested sign, it is considered that it will be perceived by consumers as having a purely decorative nature and, as such, it will have a limited impact on the public as an indicator of a commercial origin.

The contested mark has no elements that could be considered more dominant (visually eye-catching) than other elements.

Visually and aurally, the marks coincide in the string of letters/sounds ‘ALLE*’. In this context it must be pointed out that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Consequently, the identical beginnings of the signs are of particular importance. The signs coincide also in the further letter ‘O’, however it is positioned differently in both signs, namely it is the seventh letter of the earlier mark and the fifth of the contested sign. From the aural point of view, the signs at issue coincide in the same number of syllables.

The signs differ in their remaining letters, namely two letters, ‘*GR*’, in the earlier mark and one letter, ‘*P’, in the contested sign. The signs differ also in the stylisation of the contested mark, though as previously remarked this difference is of a very limited impact.

Taking into account all the above, the signs are considered visually and aurally similar to an average degree.

Conceptually, for the relevant public neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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.

3. The ‘link’ between the signs

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

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

 the degree of similarity between the signs;

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

 the strength of the earlier mark’s reputation;

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

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

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

Taking into account an average degree of visual similarity between the signs at issue, it is likely that the relevant public connects the mark applied for with the opponent’s earlier mark. In particular, the relevant public will not fail to notice that both signs at issue start identically, with ‘ALLE-‘, which constitute four out of seven in the earlier mark and six letters of the contested sign. Moreover, there is an average degree of aural similarity between the signs. According to case-law, even if the signs are only slightly similar, it is not altogether inconceivable that the relevant public could make a link between them and, even if there is no likelihood of confusion, be led to transfer the image and the values of the earlier marks to the goods bearing the mark applied for (11/12/2014, T-480/12, MASTER, EU:T:2014:1062, § 74).

The earlier mark has no meaning in relation to the opponent’s services for which reputation has been proven and, therefore, its inherent distinctiveness is average. As has been established above, the opponent’s mark has a strong reputation in Poland in relation to operating an online marketplace for the negotiation of commercial transactions between third parties in the selling and purchasing of goods in Class 35.

The contested goods cover Classes 11 and 21 and in Class 35 services concerning retailing, wholesaling, catalogue sale, sale via online shops, sale via mail order of a variety of goods, for example of those included in Classes 11 and 21. Therefore, these contested services are at least similar to the opponent’s services for which reputation has been established since they all have the same purpose of enabling customers to conveniently view and purchase goods. As regards the contested goods, the evidence submitted shows that the opponent makes available on its e-commerce marketplace a large range of products which include the contested goods. Therefore, the goods and services at issue show important connections to lead to the finding that the average consumer of the contested goods and services, who knows the reputed ‘ALLEGRO’ mark and who encounters the contested sign, may recall the earlier mark, that is to say, establish a mental ‘link’ between the signs, without necessarily confusing these marks.

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). Consequently, the Opposition Division will now analyse whether there is a risk of injury under Article 8(5) EUTMR.

4. Risk of injury

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

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

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

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

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

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

The opponent claims the following:

• The contested mark would take unfair advantage of the long–standing efforts of the opponent to promote and develop its ‘ALLEGRO’ brand, as an image transfer is not only likely but inevitable where a famous brand that particularly stands for quality is used by a competitor in a nearly identical way in relation to similar goods and services.

• A person expecting to see an advertisement for the opponent’s services upon seeing the mark applied for would lose its trust in the identifying function of the ‘ALLEGRO’ mark if in reality it had to deal with another party such as the applicant. Thereby, the essential function of the earlier mark, namely to guarantee origin, would be damaged. So would their function to guarantee quality and its other communicative functions.

In other words, the opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to the distinctive character of the earlier trade mark.

Unfair advantage (free-riding)

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

According to the Court of Justice of the European Union

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

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

The opponent bases its claim on the following:

• The mark is widely known in Poland with respect to operating an online marketplace for the negotiation of commercial transactions between third parties in the selling and purchasing of goods.

• The opponent has acquired an outstanding goodwill through many years of brand promotion and through consistent quality and innovation of its services.

• The contested mark’s stylisation is nearly identical to the stylization of the earlier opponent’s Polish figurative mark No 457 008 .

• The contested mark would take unfair advantage of the long–standing efforts of the opponent to promote and develop its ‘ALLEGRO’ brand, as an image transfer is not only likely but inevitable where a famous brand that particularly stands for quality is used by a competitor in a nearly identical way in relation to similar goods and services.

The concept of taking unfair advantage ‘concerns the risk that the image of the mark with a reputation or the characteristics that it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation’ (19/06/2008, T‑93/06, Mineral Spa, EU:T:2008:215, § 40; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40; 30/01/2008, T‑128/06, Camelo, EU:T:2008:22, § 46).

The earlier mark has built up a significant reputation among the relevant public in Poland. Over the years, it has become a strong and attractive mark. It is highly likely that the image and qualities associated with the opponent’s trade mark may be transferred to the contested mark and the goods and services it designates. Given the undeniable reputation and the connection between the goods and services, it is foreseeable that the applicant may benefit from the positive image that consumers associate with the opponent’s services. As a result, by not having to undertake its own marketing efforts, the applicant would clearly exploit the reputation and prestige of the opponent’s earlier mark.

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

5. Conclusion

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

Given that an unfair advantage established for only part of the relevant public of the European Union is sufficient to reject the contested application, as explained above, there is no need to analyse the remaining part of the public. Therefore, the contested trade mark must be rejected for all the contested goods and services.

As the earlier European Union trade mark registration No 9 759 788 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268). Likewise, since the opposition is fully successful on the basis of the ground of Article 8(5) EUTMR, there is no need to further examine the other ground of the opposition, namely Articles 8(1)(b) EUTMR.

COSTS

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

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

Vanessa PAGE

Marzena MACIAK

Victoria DAFAUCE MENÉNDEZ

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.