OPPOSITION No B 3 021 519

Bose Schweiz Holdings GmbH, Baarerstrasse 8, 6302 Zug, Switzerland (opponent), represented by Jordi Güell Serra, Av. Diagonal 622, 3º, 08021 Barcelona, Spain (professional representative)

a g a i n s t

Shenzhen Auto-vox Technology Co. Ltd., No. 709, 7th Floor, Block 5, Jinfanghua Industrial Area, Xinhe Street, Hebei Village Bantian, Longgang District, Shenzhen, People’s Republic of China (applicant), represented by Rolim Mietzel Wohlnick & Calheiros LLP, Graf-Adolf-Straße 14, 40212 Düsseldorf, Germany (professional representative).

On 20/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 021 519 is upheld for all the contested goods.

2. European Union trade mark application No 17 387 317 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 17 387 317 for the word mark ‘BOSCAM’ namely against all the goods in Class 9. The opposition is based on, inter alia, European Union trade mark registration No 12 629 697 for the word mark ‘BOSE’. The opponent invoked Article 8(1)(b) and (5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

The Opposition Division will first examine the opposition in relation to earlier European Union trade mark registration No 12 629 697, for which the opponent claimed repute 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.

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 25/10/2017. 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: Audio amplifiers; Audio apparatus; Apparatus for recording sound; Apparatus for the reproduction of sound; Audio mixing apparatus; Audio speakers for automobiles; Audio speakers for home; Car audio apparatus; Headphones; High fidelity audio apparatus; Headphone-microphone combinations; Headsets for use with computers; Instruments for the reduction of noise in systems for recording audio signals; Electroacoustic transducers; Digital sound processors; Car radios; Car stereos; Noise cancelling apparatus; Musical instrument amplifiers; Microphones; MP3 players; Loudspeakers; Loudspeaker systems; Loudspeaker stands [adapted for]; Speaker enclosures; Sound recorders; Sound processors; Sound mixing apparatus; Sound amplifying receivers; Radio receiving tuners; Radio alarm clocks; Racks for loudspeakers; Public address speaker systems; Portable sound reproducing apparatus; Vehicle stereos; Stereo headphones; Speakers [audio equipment]; Apparatus for the processing of images; Car televisions; Digital televisions; Digital video disc recorders; Digital video recorders; Electronic display panels; Video disc players; Television monitors; Television apparatus; Projectors; Batteries; Battery chargers; Computer software applications, downloadable; Computer software to enhance the audio-visual capabilities of multimedia applications; Interactive entertainment software for use with personal computers; Software to control and improve audio equipment sound quality.

Class 16: Books; Advertising signs of cardboard; Advertising signs of paper; Computer software operating manuals; Catalogues; Manuals for instructional purposes; Magazines [periodicals]; Postcards and picture postcards; Posters; Newsletters; Printed paper labels; Printed advertisements.

Class 35: Retail store services concerned with the sale of consumer audio products.

The opposition is directed against the following goods:

Class 9: Electronic control systems for machines; Wireless controllers to remotely monitor and control the function and status of other electrical, electronic, and mechanical devices or systems; Electromechanical software; Electric installations for the remote control of industrial operations; Flat panel displays; Loudspeakers; Power connectors; Power adaptors; Radar detectors; Ultrasonic object detectors for use on vehicles; Vehicle tracking systems; Electronic navigational and positioning apparatus and instruments; Electronic devices used to locate lost articles employing the global positioning system or cellular communication networks; Display monitors for providing an all-around view for a vehicle; Safety, security, protection and signalling devices; Video monitors; Videotape recorders; Wireless transmitters and receivers.

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 25/07/2018 the opponent submitted, in particular, the following evidence:

 Affidavit in English (Enclosure 1), dated 06/07/2018, including Exhibits 1‑12; the affidavit is signed by Ms Michelle Brownlee, trade mark counsel of Bose Corporation, affiliated with the opponent. It states that ‘BOSE’ products are sold in the EU in 43 ‘BOSE’ branded stores (list was enclosed) and hundreds of other retail stores including well-known retail chains such as Media Marked, John Lewis, Darty and BCC. The affidavit refers to the market share the ‘Bose’ brand had at the end of 2017 in the audio market in France, Germany and the UK. Furthermore, it mentions the advertising expenditure in the EU for the previous three years concerning the ‘BOSE’ brand, namely EUR 25‑27 million per year, including the high profile sponsorships of Mercedes Formula 1 racing team and the golf player Rory McIlroy. In addition, reference is made to many awards the ‘BOSE’ products received in 2014, 2015, 2017 and 2018, including the Best Brands and Red Dot Award.

 A chart slide with a market share report for Great Britain, France and Germany from BOSE’s fiscal year ending 03/31/2017 (Enclosure 1 Exhibit 3). In the chart, it states that in the audio market, which includes products such as soundbars, home theatres, wireless speakers and headphones, the ‘BOSE’ market share is 24.8 % for France, 25 % for Germany and 18 % for Great Britain. This results in ‘BOSE’ having the biggest market share in comparison to other producers in all of the three relevant territories.

 Printouts from different websites and copies of magazines mentioning awards granted to the opponent. For example:

o ‘Red Dot Award’ – a list of winning products from a German website, with a description of the award in English; award granted by a panel of judges for high design quality (Enclosure 1 exhibit 6):

 2014 – BOSE for SoundTouch 30 Wi-Fi Music System,

 2017 – BOSE for a Soundbar, Home Entertainment System, Wireless Headphones (SoundSport Pulse and QuietControl 30) and Wireless Bass Module.

o ‘Best Brands’ – printouts from a German website describing the Best Brands award granted in Germany for best product brand. According to the description of the award that was submitted, winners of the award are chosen by consumers in a representative study conducted by GfK consumer research institute based on two key yardsticks: the actual economic success of the brand on the market place and the perceived popularity of their brand among consumers (Enclosure 1 exhibit 7):

 2018 – BOSE Best Product Brand

 2017 – BOSE Best Product Brand

 2017 – BOSE Best Growth Brand

 2015 – BOSE Best Product Brand

 2014 – BOSE Best Product Brand

o ‘The plus X Award’ - printouts from a German website describing this award which is grated for innovation, quality, design, ease of use, functionality, ergonomics and ecology. According to the documents submitted, the award is granted by a jury and the contestants must first apply to the contest (Enclosure 1 exhibit 8):

 2014 - BOSE WAVE SOUNDTOUCH (music system) for innovation, high quality, design, ease of use

 2014 - BOSE SOUNDTOUCH 30WIFI for innovation, high quality, design, ease of use

 2014 - BOSE SOUNDTOUCH PORTABLE WIFI for innovation, high quality, design, ease of use

 2015 - BOSE SOUNDLINK COLOUR BLUETOOTH SPEAKER for high quality, design, ease of use

 2015 - BOSE SOLO 15 TV SOUND SYSTEM for high quality, design, ease of use

 2015 - BOSE SOUNDLINK ON-EAR BLUETOOTH HEADPHONES for high quality, design, ease of use

 2015/2016 - BOSE SOUNDLINK ON-EAR BLUETOOTH HEADPHONES product of the year.

o ‘TOP MARKE 2008’ for best car hi-fi, mentioned in a copy of ‘Auto Zeitung’ from 2009 in German (Enclosure 1 exhibit 9).

o ‘Best Brand’ for best car hi-fi, mentioned in a copy of ‘Auto Motor and Sport’ in German from 2009 (Enclosure 1 exhibit 9).

o ‘Cool Brands’ – printouts from a British website describing the ‘Cool Brands’ award granted to Britain’s 20 coolest brands, regardless of industry sector; according to the description of the award that was submitted, CoolBrands are chosen by the Expert Council and 2 500 members of the British public. Brands do not apply or pay to be considered. ‘BOSE’ is listed as the 14th coolest brand (Enclosure 2).

o ‘Deutschlands Beste Online-Shops: Kategorie Elektronikhersteller’ – a printout from a webpage of Deutsches Institut für Service-Qualität, dated 21/09/2017, listing BOSE.de as the second-best electronics’ online shop; the page is not translated into the language of the proceedings, but it is self-explanatory in the abovementioned extent (Enclosure 2).

o ‘Cannes Lions 2015’ – a screenshot, dated 24/06/2015, from YouTube with a BOSE advertisement. Under the video it mentions that MediaCom EMEA awarded a Bronze lion in the Media Lion category in ‘Other Consumer Products’ to ‘BOSE’ (Enclosure 2).

o ‘Euro Effies’ awards 2017 – a screenshot, from webpage stating that the European Association of Communications Agencies from Brussels, Belgium awarded Redtree Productions, Inc. for the advertisement of ‘BOSE’ in the categories of Consumer Goods and Brand Re-vitalisation (Enclosure 2).

 Press clips from different newspapers and websites, including:

o Extracts from ‘Daily Mail’ online, from 18/06/2018, which state that ‘BOSE’ is ‘a company known for noise-cancelling headphones’ (Enclosure 1 exhibit 11).

o An article titled ‘Derek Low uses $30k worth of air miles to travel on most luxurious flight in the word’ published in ‘Daily Mail’ online on 01/10/2014, mentioning that during a very luxurious flight, amongst other luxurious products and services, ‘BOSE’ headphones have been offered to passengers. A photo of the headphones with the ‘BOSE’ trade mark appears in the text (Enclosure 3).

o ‘The Independent’ online, from 16/07/2013 (‘Dr Bose’s legacy: the real sound of music’) with a description of the history of the brand: it states that the company was founded in 1964 in the USA and that it is now ‘known for its high-quality, and high-cost, speakers’; moreover, the article states that ‘BOSE’ noise‑cancelling headphones are popular amongst consumers and pilots for both military and commercial airlines; it also mentions that ‘BOSE’ sound systems are found in different public places, including the Sistine Chapel (Enclosure 1 exhibit 11).

o ‘Bose for the Buffalos in Ghelamco Arena’, form 20/08/2014 (www.psneurope.com) describing that at a stadium in Belgium ‘BOSE’ speakers have been installed to ensure a reliable sound system (Enclosure 4).

o ‘An Amazing Way to Install Speakers’ from 13/08/2016 (on the market tools-expert.com) mentioning that ‘BOSE’ speakers are installed in the famous basilica La Sagrada Familia in Barcelona (Enclosure 4).

o ‘Stadium Sporting Gijon installed a distributed system speaker for great sound’ from www.digitalavmagazine.com mentioning that a new sound system from ‘BOSE’ was installed at the oldest Spanish stadium El Molinón at the beginning of 2017 (Enclosure 4).

o ‘Bose® Professional Components Installed at Plaisterers’ Hall in London, UK, by Whitwam Audio Visual Solutions’, from 03/02/2016, (www.clynemedia.com), describing that ‘BOSE’ speakers have been chosen for an upgrade of the sound system in the Plaisterers’ Hall to a high-quality speech and recorded music system (Enclosure 4).

o ‘Formel 1 Business-Ticker: Mercedes-Sponsor Bose verlängert’ from 21/10/2017 at www.motorsport-magazin.com, article in German without a translation into the language of proceedings; however, the article is self explanatory to the extent that it refers to ‘BOSE’ sponsoring the Mercedes team (with Lewis Hamilton) in Formula 1 races (Enclosure 3).

 Reviews of ‘BOSE’ products from different websites, such as ‘Best noise cancelling headphones’ form 03/11/2017, (https://uk.finance.yahoo.com); ‘Test Labo de la Bose SoundLink Revolve+’ form 15/08/2017 (http://labo.fnac.com); ‘Bose QuietComfort 35II’ form 16/10/2017 (http://www.cnetfrance.fr); and many others (Enclosure 3).

 Print-outs from 2018 from several online shops in the EU where ‘BOSE’ products can be purchased, including Media Markt, Amazon and El Corte Ingles in Spain, and Lufthansa WorldShop and John Lewis in the UK (Enclosure 6). Despite the fact that the print-outs are from 2018, some web pages’ opinions from customers grading their purchases are dated 2017.

 Photos with big advertisements of the ‘BOSE’ brand; undated; according to the opponent taken at an automobile show in Paris and in a Mazda ‘pop-up-store’ in a shopping centre in Dusseldorf (Enclosure 1 exhibit 5).

 History of the brand from the opponent’s website, including a list of important dates and facts from the company’s perspective. For example: the expansion of the ‘BOSE’ brand to the German market in 1972; installation of ‘BOSE’ sound systems in many public places such as the Sistine Chapel, St. Peter’s Cathedral in Rome, Grad Mosque in Mecca and many others; 30 years of partnership with General Motors that resulted in over 100 vehicle models featuring ‘BOSE’ sound systems (Enclosure 1 exhibit 1).

 Samples of undated advertisements in English, including pictures of Formula 1 drivers Lewis Hamilton and Nico Rosberg wearing ‘BOSE’ headphones and race suits bearing ‘BOSE’ trade marks (Enclosure 1 exhibit 10).

 Extract from the Wikipedia website regarding the BOSE Corporation; the history of the brand is presented together with a description of some of the company’s specialised products, such as noise cancelling headphones, smartphone applications and car audio products (all bearing the ‘BOSE’ trade mark). Moreover, it states that Bose is conducting research into using electromagnetic motors in place of conventional (hydraulic or air) automotive suspension systems, however, there are no vehicles in production using this system as yet. In addition, it states that in 2010, Bose introduced ‘Bose Ride’, an active system that reduces road-induced vibration in the driver’s seat (information retrieved from The New York Times in 2012) (Enclosure 5).

In order to satisfy the requirement of reputation, the earlier mark must be known by a significant part of the public concerned by the goods or services covered by that trade mark (judgments of 14/09/1999, C‑375/97, Chevy, EU:C: 1999:408, § 22-23; 25/05/2005, T‑67/04, Spa-Finders, EU:T:2005:179, § 34).

The Court also held that all the relevant facts must be considered in assessing the reputation of the earlier mark, ‘in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of investment made by the undertaking in promoting it’ (judgment of 14/09/1999, C‑375/97, Chevy, EU:C: 1999:408, §25, 27).

Having examined the evidence listed above, the Opposition Division finds that the earlier trade mark ‘BOSE’ has acquired a reputation in the European Union (at least in the United Kingdom and Germany) for some of the abovementioned goods.

In relation to the affidavit, it should be noted that statements drawn up by interested parties themselves or by affiliated companies are generally given less weight and probative value than other independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter. However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the affidavit are supported by the other items of evidence.

In this case, most of the statements from the affidavit are backed up by additional evidence provided. The evidence submitted as a whole shows that the trade mark ‘BOSE’ has been subject to long-standing and intensive use and is generally known in relation to different audio apparatus in the relevant market, where it enjoys a consolidated position among the leading brands. This is corroborated, for example, by press articles in popular newspapers in which ‘BOSE’ is mentioned as ‘a company known for noise-cancelling headphones’ (‘Daily Mail’, Enclosure 1 exhibit 11) and also ‘a company known for its high-quality, and high-cost, speakers’ (‘The Independent’, Enclosure 1 exhibit 11). The remaining press releases and reviews referring to the goods under the ‘BOSE’ mark also give some indirect information in relation to the opponent’s investments and its promotional and marketing strategies. Moreover, the evidence submitted regarding the opponent’s sponsorship of Formula 1 Mercedes team (Enclosure 2) permits some conclusions to be made about the degree of exposure of the public to the opponent’s advertising campaigns. The fact that ‘BOSE’ sponsors Lewis Hamilton, currently the most successful driver in Formula 1, significantly adds to the brand’s value and recognition.

Many of the awards that ‘BOSE’ products have been granted were for their high quality, unique design, ease of use or innovation, and cannot be regarded as directly proving recognition of the mark on the market, but can, however, add to the advertising efforts that the opponent undertakes to create a coherent brand image. Applying for such awards and encouraging reviews of ‘BOSE’ products could be perceived as one means of advertising. It must be borne in mind that consumers, prior to the purchase of electronic devices, often refer to product rankings and reviews to learn more about the market of goods they are about to buy. Therefore, the recognised high quality of the opponent’s goods, which is reflected in many product rankings, enables the opponent to reach more consumers and therefore increase brand awareness.

Moreover, the ‘Best Brands’ award in Germany and the ‘CoolBrand’ award in the UK give some direct and clear information on the recognition of the ‘BOSE’ brand in the aforementioned territories. According to the information provided, these awards are granted based on the marks’ perception and recognition among consumers. Also, for these awards the brands do not need to apply in order to be considered. For example, GfK (a recognised research company) awarded ‘Bose’ the ‘BestBrand’ in Germany five times between 2014-2018. This significantly increases the probative value of the opponent’s evidence and, in combination with the rest of the submitted evidence, gives the Opposition Division relevant information as regards the extent to which the trade mark has been promoted. Consequently, the evidence submitted in relation to the aforementioned awards is considered to be an indication of the opponent’s intensive and widespread sales and promotional activities.

Therefore, all the aforementioned facts and evidence allow the Opposition Division to conclude that the earlier trade mark ‘BOSE’ has been subject to long-standing and intensive use, at least in the United Kingdom and Germany, and that it was generally known in the relevant market sector and enjoyed a consolidated position among the leading audio equipment manufacturers on the filing date of the EUTM application. Although the evidence does not refer to all the countries of the European Union, the European Court of Justice has clarified that for an earlier European Union trade mark, reputation throughout the territory of a single Member State may suffice (06/10/2009, C‑301/07 ‘PAGO’, EU:C:2009:611, § 29, 30). Therefore, the Opposition Division acknowledges that reputation proven in Germany and the United Kingdom is also sufficient for concluding that the earlier trade mark has a reputation in the European Union.

Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade mark enjoys a certain degree of recognition and reputation among the relevant public at least for audio apparatus; apparatus for the reproduction of sound; audio speakers for automobiles; audio speakers for home; car audio apparatus; headphones; high fidelity audio apparatus; car radios; car stereos; loudspeakers; loudspeaker systems; public address speaker systems; portable sound reproducing apparatus; vehicle stereos; stereo headphones; speakers [audio equipment].

For reasons of procedural economy, the Opposition Division will not analyse the evidence with respect to the remaining goods and services in Classes 9, 16 and 35 for which the opponent also claimed to have obtained a reputation. The Opposition Division will, therefore, proceed on the basis of reputation for the aforementioned goods in Class 9.

Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR such as, for example, the degree of similarity between the signs, the inherent characteristics of the earlier trade mark, the type of goods and services in question, the relevant consumers, etc.

The signs

BOSE	BOSCAM
Earlier trade mark	Contested sign

The relevant territory is 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). In this case, as reputation is proven in, inter alia, Germany, and the aural similarities are also greater in this territory, the following analysis will focus on the German public only.

The earlier mark has no meaning in the relevant territory, therefore it is distinctive.

The contested mark, as a whole, is also meaningless. However, if it appears on goods that could be perceived as somehow referring to cameras, such as flat panel displays, display monitors for providing an all-around view for a vehicle; video monitors; videotape recorders part of the public might consider the second syllable ‘CAM’ as a common, non-distinctive abbreviation of the word ‘camera’. In such case the first element ‘BOS’ would still have normal distinctiveness and the distinctiveness of the expression as whole would not be altered.

Visually and aurally, the signs coincide in the letters at their beginnings ‘BOS’. They differ in the last letter ‘E’ of the earlier sign and the letters ‘CAM’ of the contested sign (which part of the public could consider non-distinctive for some of the relevant goods, as explained above).

Despite the fact that the marks clearly differ in their lengths and the letters that compose their second parts, they coincide at their beginnings which leads at least to a below average degree of similarity. This is because consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. 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.

Conceptually, neither of the signs as a whole has a meaning for the public in the relevant territory. Even if part of the public will have some associations with the verbal element ‘CAM’ in the contested mark, this element is non-distinctive, as explained above, and cannot indicate the commercial origin of the goods. The attention of the relevant public will be, therefore, attracted by the fanciful beginning of the mark, which has no 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.

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.

It must 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 (24/03/2011, C‑552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 53).

In this case, the signs are visually or aurally similar to at least a below average degree as the public would not fail to notice that the trade mark applied for, begins with ‘BOS-’, which comprises almost the whole of the earlier mark ‘BOSE’ (see, by analogy, 16/12/2010, T‑345/08 and T‑357/08, BOTOLIST and BOTOCYL v BOTOX, EU:T:2010:529).

The goods target the same public as all of the goods that the earlier mark is reputed for target the public at large. In such case, it is likely that the consumers will be confronted with both marks at some point in time.

Some of the goods are identical (e.g. the contested loudspeakers, electronic devices or systems). Some of the remaining contested goods could be regarded either as parts or accessories for the opponent’s goods (e.g. power adaptors, power connectors) or could be used by the consumers in the same contexts or situations: for example, the contested vehicle tracking systems; electronic navigational and positioning apparatus and instruments; display monitors for providing an all-around view for a vehicle could be used simultaneously in vehicles with audio speakers for automobiles. It must be borne in mind that if consumers come across a trade mark similar to an earlier reputed mark in the same situation, this could significantly increase the risk of association between those marks. Moreover, some of the contested goods could have built-in audio functions. In any case, all of the goods under comparison belong to the same broad electronic industry.

The Opposition Division also notes that the opponent is currently expanding its brand outside the audio market, into the market of different car systems (as mentioned in Wikipedia and backed up by references to many press releases). Consequently, at least the part of the public that is aware of that fact might believe that the contested goods, especially the ones that relate to cars, are a natural expansion of the earlier reputed brand.

Therefore, taking into account and weighing up all the relevant factors of the present case, in particular the similarities between the signs, the level of recognition of the earlier mark and the proximity of the contested goods, the Opposition Division concludes that when encountering the contested mark, the public will ‘establish a link’ between the signs in relation to goods in conflict.

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).

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.

In the present case, the opponent claims that the applicant may take unfair advantage of the reputation of the earlier trade mark, since, because of the similarity between the signs and the goods in question, the marketing of the challenged mark will be easier. In the opponent’s opinion, there is a reasonable risk that the image of high quality and prestige of the earlier mark ‘BOSE’ will be transferred to the goods under the ‘BOSCAM’ trade mark. In this way, the contested mark may manage to capture the consumers’ attention. The consumers will consequently be attracted to it and be inclined to acquire the ‘BOSCAM’ goods. In such case the applicant will obtain an unfair commercial advantage on the market; the marketing of its goods will be made easier thanks to the association with ‘BOSE’, and therefore it will save itself the expense of launching a new and unknown trade mark on the market. According to the opponent, the applicant might take advantage of the opponent’s efforts taken to create and maintain their marks’ image of prestige and quality without paying any compensation.

The opponent furthermore argues that since the goods bearing the earlier mark (‘BOSE’) have high quality and enjoy a prestige on the market, the consumers would expect the same quality standards from the goods marketed under the trade mark ‘BOSCAM’. However, since the opponent would not be able to guarantee or even influence the quality of the applicant’s goods, this will have a negative impact on the image of quality and prestige conveyed by the earlier mark, thereby impairing its selling power and prestige. As the opponent claims to be one of the top companies in the world in the electronics field, especially in connection with audio equipment, it argues that it is clear that consumers might think the goods covered by the contested mark form part of a brand extension of the earlier trade mark ‘BOSE’.

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

Unfair advantage (free-riding)

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

It must be stated that the evidence submitted clearly shows that, throughout the years, the opponent has built a strong image of high-quality goods under the ‘BOSE’ brand. This is proven not only by the many awards and positive reviews submitted by the opponent, but also by the fact that the ‘BOSE’ products have been chosen to be used in many prestigious places across Europe, including the Sistine Chapel, Sagrada Familia and sport stadiums. This must be considered at least as indirect proof of recognition of the quality of the goods associated with the brand. Moreover, as can be seen from other evidence submitted, the brand is perceived as luxurious and expensive (see press clips from ‘Daily Mail’, dated 01/10/2014, and ‘The Independent’, dated 16/07/2013, Enclosures 1 and 3). Therefore, as the relevant public would establish a link (or form an association) between the signs, for the reasons explained above, the luxurious image of the earlier mark would inevitably be transferred to the applicant’s goods if they were marketed under the contested sign.

The opponent must have made substantial investments in developing and building the reputation of its earlier mark. The use of the contested mark by the applicant will take unfair advantage of such investment and the earlier mark’s reputation since the applicant would benefit from the goodwill of the earlier trade mark without having to make any investments on its own. On the basis of the above, the Opposition Division concludes that the contested trade mark will take unfair advantage of the distinctive character or the repute of the earlier trade 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.

Other types of injury

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

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

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

The Opposition Division

Renata COTTRELL

Marta Maria CHYLIŃSKA

Tu Nhi VAN

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.