OPPOSITION No B 3 038 620

e-Boks A/S, Dampfærgevej 28, 2100 Copenhagen Ø, Denmark (opponent), represented by DLA Piper Denmark Law Firm P/S, Raadhuspladsen 4, 1550 Copenhagen V, Denmark (professional representative)

a g a i n s t

Nicoventures Holdings Limited, Globe House, 1 Water Street, London, WC2R 3LA, United Kingdom (applicant), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative).

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

DECISION:

1. Opposition No B 3 038 620 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 426 719 for the word mark ‘eBOX PRO’. The opposition is based on Danish trade mark registrations No 2001 03195 for the word mark ‘eBoks’ (earlier mark 1), No 2006 00941 for the word mark ‘E-BOKS’ (earlier mark 2) and No 2011 00912 for the figurative mark (earlier mark 3). The opponent invoked Article 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

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

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

 The signs must be either identical or similar.

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

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

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

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

a) Reputation of the earlier trade marks

According to the opponent, the earlier trade marks have a reputation Denmark.

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

In the present case, the contested trade mark was filed on 02/11/2017. However, the contested trade mark has a priority date of 08/05/2017. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in Denmark 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:

Earlier mark 1

Class 9: Data processing and EDP programmes especially EDP programmes for Internet based services, data processing equipment and accessories (not included in other classes) for all the aforementioned goods.

Class 37: Installation, repair and maintenance of data processing, EDP and communication apparatus and peripheral equipment therefor.

Class 38: Telecommunication, also Internet based, including distribution of data and electronic data processing programmes as internet based services.

Class 42: Design, development and updating of data processing and EDP programmes, especially EDP programmes concerning Internet based services, computer programming, implementation of EDP programmes, technical consultancy and consultancy concerning the aforementioned services.

Earlier mark 2

Class 38: Electronic mail, including transmission of messages and images.

Class 39: Storage of electronically-stored documents; storage of documents and data stored on electronic media.

Class 42: Computer programming; design and update of computer software; counselling regarding computer software and hardware.

Earlier mark 3

Class 9: Computer software, recorded; computer programmes (downloadable); computer software for use in internet-based services; computer software for use in electronic storage, safe-keeping and for logistics purposes; computer application software for mobile phones; computer encryption software; computer software for records management; recorded electronic data, sound and image carriers.

Class 38: Telecommunications; transmission of data and software programmes; internet-based services in the form of user access and rental of access time to global computer networks to databases with contents of electronically stored data, documents, images, photos and personal data; electronic mail; computer aided transmission of messages and images; fibre optic networks communication; communications by computer terminals; voice mail services; communications by telephone; mobile telecommunications; electronic mail aided and mobile telephone network aided transmission of messages .

Class 39: Storage; safe-keeping; physical storage of documents, data, sound and images, including such stored on electronic media; storage information.

Class 42: Computer programming; design, development, implementation and updating of computer software; computer software consultancy; rental of computer software; physical and non-physical conversion of data or documents for electronic media; physical or non-physical conversion of computer programmes and data; retrieval of computer data; recovery of computer data; electronic storage and safe-keeping of data, documents, sound and images in databases or stored on other electronic media.

The opposition is directed against the following goods:

Class 34: Electronic cigarettes; cartridges for electronic cigarettes; liquids for electronic cigarettes; cigarettes containing tobacco substitutes; tobacco substitutes; cigarettes; tobacco; tobacco products; cigarette cases; cigarette boxes.

In order to determine the marks’ 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 marks, the intensity, geographical extent and duration of their use, and the size of the investment made by the undertaking in promoting them.

On 12/02/2018 and 22/10/2018, the opponent submitted the following evidence:

 Appendix 1: an article containing a ranking performed by a company called Caliber (Group Caliber) dated 01/03/2017 (i.e. before the priority date). The document shows ‘e-Boks’ ranked as second in a ‘Top 10 organizations in Denmark’ below ‘LEGO’ and above ’ECCO’. According to the table, ‘e-Boks’ is in the ‘strong’ category of what it takes to be and stay trusted (‘trust and affection’) with a rating of ‘76,8’ in this regard, and ‘e-Boks’ is ranked in second position. The article, inter alia, mentions that: ‘When we look at what elements in the brand and reputation of these companies drive trust and affection the most, we find things like integrity, authenticity and relevance’.

 Appendix 1a: extracts from the opponent’s website dated 22/10/2018 (i.e. after the priority date) regarding information about the opponent’s company including, inter alia, some of its services, its owners, its CSR policy and its sponsorships, along with the collaboration with tennis player Caroline Wozniacki.

 Appendix 1b: extracts from the opponent’s website containing a time line highlighting the milestones of the opponent’s company and various figures from 2001 to 2017 as well as mentioning some of the opponent’s services.

 Appendix 2: advertisements of the opponent (the first one containing the slightly dated year 2009) displaying the opponent’s website, a slight alteration of earlier mark 3 and containing pictures of tennis player Caroline Wozniacki.

 Appendix 3: the opponent’s Danish trade mark registrations No 2001 03195 (earlier mark 1), No 2006 00941 (earlier mark 2) and No 2011 00912 (earlier mark 3).

 Appendix 4: an extract from a survey regarding awareness of the opponent from 2013.

 Appendix 4a: an English translation of the above-mentioned survey (‘e-Boks, Awareness Survey, December 2013’) dated 2013. The survey was carried out by the company TNS (Kantar Gallup, Kantar TNS, The TNS Group, Gallup) in December 2013. It covers a random sample of 1,050 Danes aged 18-75 years using online banking. In 2013, 67% state that ‘e-Boks’ is extremely or moderately familiar to them. The survey’s figures are explained in terms of groupings of answers from women and men, their age, etc. In 2013, 87% state that they have signed up to ‘e-Boks’, which is an increase of 9% point compared to 2012. Furthermore, 68% received their payslip via ‘e-Boks’, which is an increase of 3% point compared to 2012. The development of the figures is explained in regard to the age groups of the respondents. The survey mentions some of the opponent’s services.

 Appendix 5a: an extract from a website belonging to the company Group Caliber (Caliber) dated 31/07/2018 (i.e. after the priority date) containing an article regarding a ‘Trust & Like’-ranking in Denmark (‘Q2 2018 results: Denmark Top 100’). The ranking shows that ‘e-Boks’ has a ‘Trust & Like Score’ of ‘79,6’.

 Appendix 5b: an extract from a website belonging to the company Group Caliber (Caliber) dated 31/01/2018 (i.e. after the priority date) containing an article regarding ‘the public’s perception of Denmark’s 100 most prominent companies’ in 2017 including a top 10-ranking regarding the extent to which the respondents like and trust a company. The ranking shows that ‘e-Boks’ has a ‘trust & affection score’ of ‘77,5’. Moreover, the appendix contains an internal article in which the results of the ranking are commented on, including the second place that ‘e-Boks’ has been ranked as.

 Appendix 6: various advertisements of the opponent. Some of them contain earlier mark 3 and some of them contain a slightly altered version of this mark. Some of them are dated 30/10/2013. Moreover, most of them contain the opponent’s website. Six of the advertisements (undated) are shown as used in public (three of them on buses).

 Appendix 7a: extracts from the opponent’s website listing business partners from which it is possible to receive mail.

 Appendix 7b: extracts from the opponent’s website listing business partners from which it is possible to receive mail, and information on how companies use ‘e-Boks’. The appendix also contains brochures from business partners.

 Appendix 8a: extracts of the opponent’s annual magazine for 2017 named ‘365° DIGITAL INDSIGT OG UDSYN’.

 Appendix 8b: translations into English of the above-mentioned extracts. They refer to, inter alia, the opponent’s growth and turnover, to some of the opponent’s services and to the rankings carried out by the company Caliber (Group Caliber) commented on above. Moreover, it is stated that “The Danes’ Sport Award” in 2017 was presented by, inter alia, ‘e-Boks’, and that more than 14,000 Danes voted for their favourite projects. Furthermore, the opponent’s financial milestones, including investment figures from 2017, are mentioned. It is, inter alia, stated that the opponent has had ‘good growth rates’, made ‘massive investments’, has had a growth in the turnover ‘by 10 per cent’ and that there has been a ‘progress in the result of the ordinary operation by more than 10 per cent’. It must be noted that some of the information in this appendix is not clear from appendix 8a; though translations have been submitted, the original versions have not been provided.

On 25/02/2019 (i.e. after the substantiation period), the opponent submitted the following additional evidence:

 Appendix 9a: extracts from the opponent’s website both undated and dated 31/01/2019, 06/02/2019 and 25/02/2019 (i.e. after the priority date) regarding information about the opponent’s business and showing some of its services.

 Appendix 9b: extracts from the opponent’s website both undated and dated 30/01/2019 and 25/02/2019 (i.e. after the priority date) regarding information about the opponent’s business and showing some of its services.

 Appendix 10a: extracts from the opponent’s business partners’ websites in which ‘e-Boks’ is mentioned. Some of them are undated, some of them are dated ‘2017’ (i.e. it is not clear whether or not this was before or after the priority date), 17/08/2017 (i.e. after the priority date), while some of the dates appearing in the extracts are from 2018 and 2019 (i.e. after the priority date). The extracts show a relationship between the opponent and some of its business partners in terms of insurance companies, a pension company, a trade union, banks and municipalities.

 Appendix 10b: extracts from the opponent’s website dated 14/01/2019 (i.e. after the priority date) regarding itself, containing six articles from 2018 (i.e. after the priority date), three from 2017 (dated after the priority date), one from 2016 (i.e. before the priority date) and four from 2015 (i.e. before the priority date). The extracts, inter alia, contain a ranking carried out by the company Caliber (Group Caliber) similar to the ones carried out by this company and mentioned above. This ranking regards the first quarter of 2018 and ‘e-Boks’ is ranked as the highest ranked company with a ‘Trust & Like Score’ of ‘80,1’.

 Appendices 11a-11e: the opponent’s annual reports from 2013-2017 in which the financial figures of the opponent relevant to that period are shown. The appendices also include information about the company The TNS Group (TNS, Kantar Gallup, Kantar TNS, Gallup). This company has carried out the survey mentioned in appendices 4 and 4a.

 Appendix 11f: an extract from tennis player Caroline Wozniacki’s website regarding her career profile and biography dated 14/01/2019. As can be seen in appendices 1a and 2, the opponent collaborates with this tennis player.

 Appendix 12: an extract from the opponent’s Facebook profile dated 08/01, that is to say, no year is indicated. The opponent’s Facebook page has 33,138 likes and 31,904 followers.

 Appendix 13: extracts from the websites of the company Kantar Gallup (TNS, Kantar TNS, The TNS Group, Gallup). As mentioned above, this company has carried out the survey mentioned in appendices 4 and 4a.

 Appendix 14: extracts from the website of the company Caliber (Group Caliber). This company has carried out the rankings mentioned in appendices 1, 5a, 5b, 8b and 10b.

 Appendix 15: articles from the opponent about itself.

 Appendix 16: extracts from a website belonging to the hospital ‘Rigshospitalet’. The extracts are dated 14/01/2019 (i.e. after the priority date). Furthermore, the following dates appear: 10/10/2018 (i.e. after the priority date) and 20/05/2018 (i.e. after the priority date). ‘Rigshospitalet’ is a Danish hospital and ‘eboks.dk’ and ‘e-boks.dk’ are mentioned in the extract.

 Appendix 17: a previous decision of the office, B 1 224 916. Decisions B 1 317 108 and B 1 239 500 are also mentioned, but not submitted. The oppositions are based on Articles 8(1)(b) and 8(4) CTMR (and in opposition No B 1 317 108 also on Article 8(5) CTMR). They all succeed on the basis of Article 8(1)(b) CTMR (i.e. the equivalent to Article 8(1)(b) EUTMR). As Article 8(5) CTMR (i.e. the equivalent to Article 8(5) EUTMR) is not dealt with in these decisions, they are not relevant to the present proceedings.

As mentioned above, on 25/02/2019, after expiry of the time limit, the opponent submitted additional evidence.

Even though, according to Article 7(2) EUTMDR, the opponent has to provide evidence of substantiation within a time limit set by the Office, this cannot be interpreted as automatically preventing additional evidence from being taken into account.

According to Article 8(5) EUTMDR, where after the expiry of the period referred to in Article 7(1) EUTMDR, the opponent submits facts and evidence that supplement relevant facts or evidence submitted within that period and that relate to the same requirement laid down in Article 7(2) EUTMDR, the Office has to exercise the discretion conferred on it by Article 95(2) EUTMR in deciding whether to accept these supplementing facts or evidence. The Office must exercise its discretionary power if the late facts or evidence merely supplement, strengthen and clarify the prior relevant evidence submitted within the time limit that relate to the same legal requirement laid down in Article 7(2) EUTMDR, namely, when both sets of facts or evidence refer to the same earlier mark, to the same ground and, within the same ground, to the same requirement.

In exercising its discretion, the Office must take into account, in particular, the stage of proceedings and whether the facts or evidence are, prima facie, likely to be relevant for the outcome of the case and whether there are valid reasons for the late submission of the facts or evidence. The acceptance of additional belated evidence is unlikely where the opponent has abused the time limits set by knowingly employing delaying tactics or by demonstrating manifest negligence. Moreover, the Office is not required, when exercising its discretion under Article 95(2) EUTMR, to examine all the criteria referred to above. One of those criteria alone is sufficient to establish that it does not have to take into account the late evidence.

In this regard, the Office considers that the opponent did submit relevant evidence within the time limit initially set by the Office and, therefore, the later evidence can be considered to be additional.

Overall assessment of the evidence

It is important to note that, when evaluating the evidence submitted, the Opposition Division has to make an overall assessment and all the circumstances of the specific case have to be taken into account. All the materials submitted must be assessed in conjunction with each other. Pieces of evidence may be insufficient by themselves, but may contribute to proving reputation in combination with other documentation and information.

Most of the files submitted by the opponent in terms of proving reputation of the earlier marks derive from the opponent itself. Therefore, the probative value of these files as such is limited. Even taking the evidence as a whole, the Opposition Division is not able to make the necessary connections without having to make assumptions. In particular, most of the advertisements, including those featuring tennis player Caroline Wozniacki and those used in public, are not dated, and their geographical extent and their extent of circulation and publishing are not shown. Furthermore, it is not clear whether the rankings are rankings of the opponent’s company or trade mark (brand), see, for instance, the wording ‘Company’ written between ‘Rank’ and ‘Score’ in appendix 5b. Moreover, the methodology used in the rankings is not explained, and it is not clear how they were carried out. In addition, it is not clear whether the awareness displayed in the survey is awareness of the opponent’s company or trade mark (brand), see, for instance, the wordings ‘e-Boks is extremely familiar’ and ‘e-Boks is moderately familiar’. In addition, it must be noted that the questions in the survey are not neutral but leading. Furthermore, the number of the opponent’s business partners’ users that use ‘e-Boks’ is not clear, and it is not clear how often they would use ‘e-Boks’. Also, it is not clear where the opponent’s followers on Facebook are from.

Moreover, the Opposition Division rather concurs with the applicant in that the opponent has not provided sufficiently relevant information in regard to its advertising efforts and costs in Denmark and to its market share. Such information may have helped ascertain the brand of the trade marks’ position on the market. However, on the basis of the above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade marks have acquired a high degree of distinctiveness through use. Indeed, there is no concrete information regarding the market share held by the trade marks, and there is no valid information about the awareness of the trade marks, the intensity of use or the size of the investment made by the undertaking in promoting the marks. All these factors have to be taken into account in order to determine whether or not the marks concerned enjoy a reputation from the standpoint of the consumers targeted by the opponent.

Therefore, even taking into account the additional evidence submitted after the expiry of the time limit, the Opposition Division cannot, without making suppositions, conclude that the evidence submitted by the opponent demonstrates that the earlier trade marks acquired a reputation.

Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade marks have a reputation.

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 marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Vanessa PAGE

Mads Bjørn Georg JENSEN

Valeria ANCHINI

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.