OPPOSITION No B 2 980 061

What do you meme LLC, 110 Greene Street, Suite #407, New York NY 10012, United States (opponent), represented by Edwin Coe LLP, 2 Stone Buildings Lincoln's Inn, London WC2A 3TH, United Kingdom (professional representative)

a g a i n s t

Xiamen Aseech E-commerce Co. Ltd., Unit B, 4/F East, Second factory No. 215, Yuehua Road, Huli District, Xiamen, People’s Republic of China (applicant), represented by AL & Partners S.r.l., Via C. Colombo ang. Via Appiani (Corte del Cotone), 20831 Seregno (MB), Italy (professional representative).

On 20/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 980 061 is partially upheld, namely for the following contested goods:

Class 28: Games; play balloons; toys; building blocks [toys]; dominoes; dolls; flying discs [toys]; toy robots; draughts [games]; playing cards; board games; swimming pools [play articles].

2. European Union trade mark application No 17 317 611 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 317 611 for the word mark ‘WHAT DO YOU MEME?’. The opposition is based on international trade mark registration No 1 355 471 designating the European Union for the word mark ‘WHAT DO YOU MEME?’ and on non-registered trade marks ‘WHAT DO YOU MEME?’ used in the course of trade in the United Kingdom and Ireland. The opponent invoked Article 8(1)(a), 8(1)(b) and Articles 8(4) and (5) EUTMR.

DOUBLE IDENTITY and LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(a) and 8(1)(b) EUTMR

Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.

Pursuant to 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

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

Class 28: Card games, electronic card games, game equipment set sold as a unit comprised primarily of a playing board and playing cards, tabletop games, tabletop electronic games.

The contested goods are the following:

Class 28: Games; play balloons; toys; building blocks [toys]; dominoes; dolls; Flying discs [toys]; toy robots; draughts [games]; playing cards; board games; golf clubs; rocking horses; archery implements; machines for physical exercises; swimming pools [play articles]; camouflage screens [sports articles]; bite sensors [fishing tackle]; ornaments for Christmas trees, except illumination articles and confectionery; protective paddings [parts of sports suits].

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.

The contested games include, as broader categories, the opponent’s card games. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested toys; playing cards overlaps with of the opponent’s card games. Therefore, they are identical.

The contested board games overlaps with the opponent’s game equipment set sold as a unit comprised primarily of a playing board and playing cards, tabletop games, tabletop electronic games. Therefore, they are identical.

The contested play balloons; building blocks [toys]; dominoes; dolls; flying discs [toys]; toy robots; draughts [games]; swimming pools [play articles] comprise a wide range of games and playthings which are at least similar to the opponent’s card games as they have the same purpose and nature. They usually coincide in producer, relevant public and distribution channels.

The contested golf clubs; rocking horses; archery implements; machines for physical exercises; camouflage screens [sports articles]; bite sensors [fishing tackle]; ornaments for Christmas trees, except illumination articles and confectionery; protective paddings [parts of sports suits] comprise a wide range of sporting articles and equipment and festive decorations. These goods are dissimilar to all the opponent’s goods since they have different natures, purposes, methods of use, distribution channels and points of sale. They are neither complementary nor in competition; they do not target the same consumers and they are not likely to come from the same kinds of undertakings.

b) The signs

WHAT DO YOU MEME?	WHAT DO YOU MEME?
Earlier trade mark	Contested sign

The signs are identical.

c) Global assessment, other arguments and conclusion

The signs are identical and some of the contested goods, as established above in section a) of this decision, are also identical. Therefore, the opposition must be upheld according to Article 8(1)(a) EUTMR for these goods.

Furthermore, some contested goods, as established above in section a) of this decision, were found to be at least similar to those covered by the earlier trade mark. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition is upheld also insofar as it is directed against these goods.

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

The Opposition Division will continue the examination of the opposition in relation to Article 8(5) EUTMR and in respect of the contested goods that have been found dissimilar to the opponent’s goods under the analysis of Article 8(1)(a) and (b) EUTMR, namely golf clubs; rocking horses; archery implements; machines for physical exercises; camouflage screens [sports articles]; bite sensors [fishing tackle]; ornaments for Christmas trees, except illumination articles and confectionery; protective paddings [parts of sports suits].

REPUTATION — ARTICLE 8(5) EUTMR

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

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

 The signs must be either identical or similar.

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

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

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

The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

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

Reputation of the earlier trade mark

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

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 and the United Kingdom 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 28: Card games, electronic card games, game equipment set sold as a unit comprised primarily of a playing board and playing cards, tabletop games, tabletop electronic games.

The opposition is directed against the following goods, which have been found dissimilar under Article 8(1)(a) and (b) EUTMR:

Class 28: Golf clubs; rocking horses; archery implements; machines for physical exercises; camouflage screens [sports articles]; bite sensors [fishing tackle]; ornaments for Christmas trees, except illumination articles and confectionery; protective paddings [parts of sports suits].

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 19/07/2018 the opponent submitted the following evidence.

 An affidavit signed on 17/07/2018 by the co-founder of the opponent’s company. The document states that the opponent has marketed a game called ‘WHAT DO YOU MEME’ since 2016. In particular, on 14/06/2016 the opponent launched a fundraising campaign on Kickstarter for setting up the game ‘WHAT DO YOU MEME’ collecting, by 19/07/2016, USD 229 000 from more than 5 000 supporters. The opponent also published a launching video on YouTube which was viewed more than 43 000 times prior to the date of filing of the contested application. In addition, the game was reviewed on a YouTube Channel on 17/06/2017 and that video was viewed by more than 1.1 million users. The game ‘WHAT DO YOU MEME’ was shipped to the 5 000 fundraising supporters and also sold through the opponent’s website and Amazon. In particular, the affidavit declares that prior to the filing date of contested application, a total of 1 780 units were sold in the EU through the corporate website, generating a turnover of USD 63 893. In addition, the opponent’s products were sold in Germany, Spain, France, Italy and the United Kingdom through Amazon. Finally, the affidavit includes a chart showing the units sold and the turnover generated in each of these countries (namely, 7 686 units for GBP 207 092 in the UK; 1 983 units for EUR  47 239 in Germany; 222 units for EUR 5 211 in France; 71 units for EUR 1 739 in Spain and 69 units for EUR 1 688 in Italy). The affidavit also refers to data contained in the following submitted documents:

o Annex A: Printout of the Kickstarter web page dated 19/07/2018 concerning the fundraising campaign for contributing to the creation of a card game called ‘WHAT DO YOU MEME?’. The document shows that 5 753 backers pledged USD 229 579 to help bring this project to life. In particular, the backers had the opportunity to support the project by contributing with an amount varying from USD 25 to USD 99. The founding period started on 14/06/2016 and ended on 19/07/2016.

o Annex B: Extract from a YouTube web page showing a video excerpt for promoting the Kickstarter campaign about the ‘WHAT DO YOU MEME?’ game. The video was published on 18/06/2016 and has been viewed by 53 256 users.

o Annex C: Extract from a YouTube web page showing a video excerpt on a review of the game ‘WHAT DO YOU MEME?’, published by a user on 17/07/2016. The video had 1 305 773 views.

o Annex D: Printout dated 19/07/2018 of the opponent’s corporate website. The document describes the product ‘WHAT DO YOU MEME?’ as ‘an adult party game for meme lovers’ and indicates that it is sold with price varying from USD 9.99 to USD 29.99.

o Annex E: A chart reporting the number of users visiting the opponent’s corporate website until dates prior to the filing of the contested application. The charts show, among others, a total of 75 726 visitors in the United Kingdom (89 301 sessions) and 13 691 visitors in Germany (17 027 sessions).

o Annex F: Printout of international advertisement concerning the trade mark ‘WHAT DO YOU MEME?’. Some of the provided documents are undated; however the opponent declares that these refer to dates prior to the filing date of the contested application. In particular, the documents submitted by the opponent are the following:

- A page reproducing the trade mark ‘WHAT DO YOU MEME?’ together with the assertion that in Amazon’s 2017 press release the game ‘WHAT DO YOU MEME?’ was named the first bestselling item for the category toys and games, worldwide.

- Printout of several TV and press advertisement samples. In particular, the evidence shows the game sold under the sign ‘WHAT DO YOU MEME?’, advertised on the TV channel TODAY, Megyn Kelly TODAY and in periodical or web publications such as BuzzFeed, Refinery29, Marie Claire, People Style, Usa Today, Huffpost, Cosmopolitan, Entertainment Weekly, Popsugar,Rachael Ray, Glamour, Daily Mail, Brit + Co, Shape, The Zoe Report, Real Simple, Today, PureWow, Passport, Best Products Com, Askmen, Bustle, brobile, The Berry, Newsday, Redbook. All the listed advertisement samples show the trade mark ‘WHAT DO YOU MEME?’ in relation to card games. Moreover, all the evidence reports the price of the opponent’s products in US dollars.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

Indeed, it is up to the opponent to submit evidence enabling the Office to reach a positive finding that the earlier mark has acquired a reputation in the relevant territory. The wording used in Article 8(5) EUTMR and Article 7(2)(f) EUTMDR is quite clear in this respect: the earlier mark deserves enlarged protection only if it ‘has a reputation’. It follows that the evidence must be clear and convincing, in the sense that the opponent must clearly establish all the facts necessary to safely conclude that the mark is known by a significant part of the public. The reputation of the earlier mark must be established to the satisfaction of the Office and not merely assumed.

In the present case, firstly, the evidence does not provide any clear indication of the extent of use and the degree of recognition of the trade mark ‘WHAT DO YOU MEME?’ in the territory where the reputation was claimed, i.e. the European Union and the United Kingdom.

In particular, a substantial part of the advertising sample (Affidavit F) refers exclusively to prices in US dollars (which is not a currency used in any of the European Union countries, where the reputation was claimed). Additionally, none of this evidence refers to sales data or any other information that would lead the Opposition Division to safely conclude that the trade mark ‘WHAT DO YOU MEME?’ has been used and enjoys a high degree of recognition within the European Union.

Moreover, the printout of the website ‘Kickstarter’ (ANNEX A) refers to prices in US dollars and does not contain any other indication of the use and degree of recognition of the trade mark ‘WHAT DO YOU MEME?’ in the European Union. In addition, these items of evidence do not refer to any additional document able to show to what extent the fundraising campaign targeted the European Union.

In addition, the opponent declares that several games were sold in different countries of the European Union through the corporate website of Amazon. In order to substantiate this statement, the opponent provided a chart containing the turnover generated by these sales in the Germany, France, Italy and the United Kingdom. However, the above item of evidence clearly has a limited, if any, probative value, as it is not substantiated by other objective evidence. Indeed, information deriving directly from the opponent is unlikely to be enough on its own, especially if it only consists of opinions and estimates instead of facts, or if it is of an unofficial character and lacks objective confirmation. For the same reason, the chart indicating the number of Amazon visitors (ANNEX E) lacks probative value as it is not substantiated by other official documents.

Moreover, the printout of the opponent’s website and the YouTube video excerpts (ANNEX B – D) do not show any clear and specific information concerning the use and degree of recognition of the sign ‘WHAT DO YOU MEME?’ in any of the European Union countries. Finally, the page affirming that ‘WHAT DO YOU MEME?’ was named the first worldwide Amazon’s bestselling item for the category toys and games (ANNEX F) was not supported by the original Amazon press release, in confirmation of this statement.

It follows that the opponent failed to provide solid and objective evidence that would allow the Opposition Division to conclude, beyond probabilities and suppositions, that the trade mark ‘WHAT DO YOU MEME?’ is used and widely recognised by a significant part of the relevant public in European Union and the United Kingdom. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation, even when considering the evidence in its entirety.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

The Opposition Division will continue the examination of the opposition in relation to Article 8(4) EUTMR.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

 the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

 pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

 the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

a) The right under the applicable law

According to Article 95(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

According to Article 7(2)(d) EUTMDR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide, inter alia, evidence of its acquisition, continued existence and scope of protection, including where the earlier right is invoked pursuant to the law of a Member State, a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C‑263/09 P, Elio Fiorucci, EU:C:2011:452, § 50).

The information on the applicable law must allow the Office to understand and apply the content of that law, the conditions for obtaining protection and the scope of this protection, and allow the applicant to exercise the right of defence.

As regards the provisions of the applicable law, the opponent must provide a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence (Article 7(2)(d) EUTMDR). The opponent must provide the reference to the relevant legal provision (Article number and the number and title of the law) and the content (text) of the legal provision by adducing publications of the relevant provisions or jurisprudence (e.g. excerpts from an official journal, a legal commentary, legal encyclopaedias or court decisions). If the relevant provision refers to a further provision of law, this must also be provided to enable the applicant and the Office to understand the full meaning of the provision invoked and to determine the possible relevance of this further provision. Where the evidence concerning the content of the relevant national law is accessible online from a source recognised by the Office, the opponent may provide such evidence by making a reference to that source (Article 7(3) EUTMDR).

According to Article 7(4) EUTMDR, any provisions of the applicable national law governing the acquisition of rights and their scope of protection as referred to in Article 7(2)(d) EUTMDR, including evidence accessible online as referred to in Article 7(3) EUTMDR must be in the language of the proceedings or accompanied by a translation into that language. The translation must be submitted by the opposing party of its own motion within the time limit specified for submitting the original document.

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

In the present case, the opponent did not submit any information on the legal protection granted to the type of trade sign invoked by the opponent, namely the non-registered trade mark ‘WHAT DO YOU MEME?’ in Ireland. In the notice of opposition of 20/10/2017 the opponent clearly states that ‘substantiation of the common law right of passing off in Ireland and facts and evidence relating to both rights will be filed during the course of these proceedings’. However, in its further submission the opponent failed to provide any legal reference to the relevant Irish law governing the subject non registered trade mark.

Hence, the opponent did not submit any information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the law of Ireland. Therefore, the opposition is not well founded under Article 8(4) EUTMR as far as it is based to the subject non-registered Irish trade mark.

The right under the applicable law - Passing off

The opposition is also based on a non‑registered trade mark used in the United Kingdom. The opponent claims to have the right to prohibit the use of the contested trade mark under the tort of passing off.

As regards the references to the applicable law in the United Kingdom, the opponent expressly requested to rely on online evidence pursuant Article 7(3) EUTMDR, providing the web link to the legal text of Section 5(4)a of the Trade Marks Act of 1994.

In addition, in the submission of 23/07/2018 the opponent provided the full text of Section 5(4)a of the Trade Marks Act of 1994 and the relevant jurisprudence governing the tort of passing off in United Kingdom.

A successful claim for passing off must satisfy three cumulative conditions. Failure to satisfy any one of them means that the claim cannot succeed. The conditions are:

Firstly, the opponent must prove that it enjoys goodwill or is known for specific goods under its mark. The evidence must show that the opponent’s mark is recognised by the public as distinctive for the opponent’s goods. For the purposes of opposition proceedings, goodwill must be proven to have existed before the filing date of the contested trade mark.

Secondly, the opponent must demonstrate that the applicant’s mark would be likely to lead the public to believe that the applicant’s goods originate from the opponent. In other words, the public would be likely to believe that goods put on the market under the contested trade mark are actually those of the opponent.

Thirdly, the opponent must show that it is likely to suffer damage as a result of the applicant’s use of the contested trade mark.

For the purposes of proving the acquisition of that right, the opponent must prove that it enjoys goodwill for the goods claimed under its mark.

In order to prove goodwill, the opponent did not expressly request to rely on the same evidence submitted on 19/07/2018 in support of the claim under Article 8(5) EUTMR. However, the Opposition Division will proceed on this assumption, which is the best case scenario for the opponent. As this evidence has already been analysed above, reference is made to the previous assertions.

However, some aspects related to the evidence must be pointed out at this stage. In particular, none of the evidence clearly and unequivocally refers to the United Kingdom. Furthermore, none of these documents show trading activities, advertising and consumers’ accounts that would allow the Opposition Division to safely conclude that the trade mark ‘WHAT DO YOU MEME?’ has been used, and enjoys goodwill, in the United Kingdom.

Under these circumstances, the Opposition Division finds that the opponent has failed to demonstrate that it enjoys goodwill for its goods in the mind of the purchasing public for the sign on which the opposition is based.

Since all three conditions to sustain a passing off claim must be met for it to be successful, the opposition is dismissed. Therefore, there is no need to consider the other conditions.

COSTS

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

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

The Opposition Division

Edith Elisabeth VAN DEN EEDE

Aldo BLASI

Andrea VALISA

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.