OPPOSITION No B 3 049 504

The Mathworks, Inc., 3 Apple Hill Drive, 01760 Natick, United States of America (opponent), represented by Locke Lord LLP, 201 Bishopsgate, London EC2M 3AB, United Kingdom (professional representative)

a g a i n s t

Matatalab Co., Ltd, A-201 Qianhai Shenzhen Hongkong Cooperation Zone, Shenzhen, People’s Republic of China (applicant), represented by Ieva Zvejsalniece, Imantas iela 3b-18, 1067 Riga, Latvia (professional representative).

On 03/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 049 504 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 650 409 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 650 409 (figurative). The opposition is based on, inter alia, European Union trade mark registration No 502 138 ‘MATLAB’ (word). The opponent invoked Article 8(1)(b) and (5) EUTMR, inter alia, in relation to the above-identified earlier right and Article 8(4) EUTMR in relation to the non-registered trade mark ‘MATLAB’ (word) in all member states and the EU.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of European Union trade mark registration No 502 138 ‘MATLAB’ for the registered goods in Class 9.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The date of filing of the contested application is 02/01/2018. The opponent was therefore required to prove that the opponent’s trade mark was put to genuine use in the European Union from 02/01/2013 to 01/01/2018 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based and with respect to which proof of use was requested, namely the following:

Class 9: Electrical and electronic apparatus and instruments for the input, storage, processing and transmission of data; computers; computing apparatus and instruments; computer peripheral devices; printers; printer servers; parts and fittings for all the aforesaid goods; computer software; computer software for matrix calculation; computer programs; magnetic tapes, magnetic discs, punched (encoded) tapes and punched (encoded) cards, all for computers or for data input, storage, processing or transmission apparatus.

On 07/01/2019 in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 12/03/2019, further extended to 12/05/2019, to submit evidence of use of the earlier trade mark. On 13/05/2019, i.e. within the time limit because 12/05/2019 was a Sunday, the opponent submitted evidence of use.

Additionally, on 25/10/2018, within the term given by the Office to substantiate the earlier rights and submit further material, the opponent submitted evidence of reputation/use of the earlier rights invoked. These materials are expressly referred to by the opponent in its submission regarding the submission of the proof of use. Since these materials were submitted prior to the end date of the term to submit proof of use and they may contain relevant information for the assessment of the use of the earlier mark, the Opposition Division will also examine them in the context of the proof of use assessment.

As the opponent requested to keep certain commercial data contained in part of the evidence confidential vis-à-vis third parties, the Opposition Division will describe the respective materials only in the most general terms without divulging any such data.

The evidence consists of the following:

(1) Evidence submitted on 25/10/2018

(i) Witness statement of the Vice President of Marketing of the opponent, dated 24/10/2018, according to which the opponent is the leading developer of computing software for engineers and scientists and has employees in various EU member states. It is said that MATLAB software is an interactive software environment for programming and numerical calculation, analysis and data visualization, developed in the late 1970s. It is further said that MATLAB is used in connection with computing software and related print publication, as well as educational services, seminars, conferences, contests, tutorials, blog services, technical assistance, and software maintenance services. It is also explained that MATLAB goods and services are provided in all EU member states, in most since the 1990s.

The statement also briefly introduces the rest of the submitted materials, which are structured as exhibits to it. These are the following:

(a) A chart listing EU-based universities that offer MATLAB software to students and faculties as well as screenshots of and materials downloaded from the opponent’s website and third party websites showing the mentioned use (Exhibit 1) – the chart lists universities (in some of the countries more than one) in 23 EU member states. The screenshots from the opponent’s www.mathworks.com (copyright notice 2018) give information that MATLAB is extensively used at 5 000 universities around the world in teaching, research and students projects in engineering, science, economics and finance. More than 1 000 are said to have Total Academic Headcount (‘TAH)’ License, and 24 out of the 25 top-ranked technical universities in the world have this license. A list of universities with said license includes also EU-based ones.

Part of the screenshots (mostly of the respective university websites, as well as some of the opponent’s website and some of Science Computing World (SCW’)) show the availability of MATLAB software to students and faculties at universities in most of the EU member states, inter alia top-ranked technical universities such as the University of Cambridge, UK, the University of Oxford, UK, Imperial College London, UK, the Technical University of Munich, Germany, KTH Royal Institute of Technology, Sweden, RWTH Aachen University, Germany. Part of the screenshots are dated on various dates in October 2018, another part are undated. Some of the materials indicate that on a specific date or since a specific date MATLAB software was available at certain universities, e.g. 16/02/2010 at Aalborg University of Denmark (SCW), since April 2016 at Warsaw University of Technology (www.ee.pw.edu.pl), on 19/01/2016 at University of East Anglia (SCW), license of the University of Edinburg renewed from 1/09/2016 (www.ed.ac.uk), since 8/08/2014 at University of Oxford (www.eng.ox.ac.uk), the University of Bristol in 2017 (www.bristol.ac.uk).

(b) A chart listing EU-based entities and bodies that use MATLAB goods and services as well as screenshots of and materials downloaded from the opponent’s website and third party websites showing the mentioned use (Exhibit 2) – the chart lists more than 60 entities and bodies based in most of the EU member states. The screenshots from the opponent’s website, the website of SCW and other third party websites show that different entities have used MATLAB software to develop products in the field of engineering and science. The materials contain references from different companies regarding their use of MATLAB software, such as ‘Data handling, programming, debuggig and plotting are much easier in MATLAB’; ‘Only MATLAB provided the flexibility, scalability, development speed, and level of optimisation that we required’. ‘We consider MATLAB to be the vast choice for mathematical modelling and numerical computation.’ ‘Many students and researchers in our community use MATLAB.’.

Part of the materials are undated, and part of them show that the screenshots were made in October 2018. Another part of the materials indicate that at a specific date MATLAB software was already in use and/or is used by the respective entities – e.g. the various screenshots from SCW, among others an article of 21/05/2008 on the use of ‘MATLAB popular mathematical tool’ of the Vienna-based Matrixware Information Services in relation to an algorithm; an article of 14/01/2014 says that ‘The Nobel Foundation has adopted Matlab to support the asset-liability management strategies of its $500 million portfolio used’; an article of 16/09/2011 says that ‘Thien eDrives, a developer of electrical drive systems, is using Matlab and Simulink to model, simulate and implement an electric motor control system.’

(c) A chart listing MATLAB-focused books, as well as information on the circulation of the books, as published by Springer Publishing Company; the title pages of some of the books and screenshots from www.springer.com are also furnished (Exhibit 3) – A list of over 150 titles on MATLAB-related titles published in various EU languages between 1993 and 2019 is given. The Springer-screenshots furnish information on the online offer for sale of a large number of these titles, where inter alia information on the number of downloads of the books is available. The materials from the Springer website and the title pages provided are of books in various EU languages, such as English, German, Italian, French.

Some of the titles have been published in more than one language, e.g. Mathematical Methods for Mechanics, A Handbook with MATLAB Experiments by Eckert Gekelert (English and German). A number of the provided titles have been issued in more than one edition, e.g. MATLAB Recipes for Earth Sciences by Martin H. Trauth, editions in 2006, 2007, 2010 and 2015.

The numbers of downloads of some of the books shown, are as follows: Digitale Signalverarbeitung mit MATLAB® by Martin Werner, 2012 - 291 000; Signale und Systeme, Lehr- und Arbeitsbuch mit MATLAB®-Übungen und Lösungen, by Martin Werner, 2008 – 92 000; MATLAB Guide to Finite Elements by Peter Kattan, 2008 – 129 000; Ingenieurmathematik kompakt – Problemlösungen mit MATLAB by Hans Benker, 2010 - 307 000; MATLAB® und Simulink® in der Ingenieurpraxis by Wolf Dieter Pietruszka, 2014 – 211 000; Praktische Mathematik mit MATLAB, Scilab und Octave by Frank Thuselt and Felix Paul Gennrich, 2013 – 144 000; Scientific Computing with Matlab and Octave by Alfio Quarteroni, Fausto Saleri, Paola Gervasio, 2014 – 113 000; MATLAB Codes for Finite Element Analysis, Solids and Structures by A.J.M. Ferreira, 2009 – 133 000; Robust Control Design with MATLAB® by Da-Wei Gu, Petko Petkov, Mihail M. Konstantinov, 2013 – 123 000; Dynamical Systems with Applications using MATLAB by Stephen Lynch, 2014 – 184 000.

The following is found in some of the Springer summaries/introductory pages of some of the books:

‘This book explores the numerical implementation of Finite Element Analysis using the computer program MATLAB, which is very popular today in engineering and engineering education.’ in MATLAB Guide to Finite Elements by Peter Kattan, 2008;

‘MATLAB was chosen as the major computer tool for modeling, firstly because it is unique in its capabilities, and secondly because it is available in most academic institutions, in all universities and in the research departments of many companies’ in Environmental Modeling, Using MATLAB by Ekkehard Holzbecher, 2012;

‘The algorithms and accompanying numerical examples will be provided in the programming environment MATLAB, which is near to ubiquitous at universities around the world.’ in Numerical Linear Algebra, A Concise Introduction with MATLAB and Julia by Folkmar Bornemann, 2018.

‘MATLAB is a high-level language and interactive environment, which is nowadays well developed and widely used for a variety of mathematical problems arising from both theory and applications.’ in Stability of Linear Delay Differential Equations, A Numerical Approach with MATLAB by Dimitri Breda, Stefano Maset, Rossana Vermiglio, 2015.

‘The choice of Matlab results from its versatility in various fields of science.’ in Image Analysis for Ophthalmological Diagnosis, Image Processing of Corvis® ST Images Using MATLAB by Robert Koprowski, 2016.

‘This book illustrates how MATLAB compact and powerful programming framework can be very useful in the finite element analysis of solids and structures.’ in MATLAB Codes for Finite Element Analysis, Solids and Structures by A.J.M. Ferreira, 2009.

‘MATLAB is a platform for scientific computing that can work in almost all areas of the experimental sciences and engineering. This software allows you to work in the field of graphics, featuring some pretty extensive capabilities. The commands and functions that are implemented in MATLAB and other toolkits working with MATLAB are robust, accurate and very efficient.’ in MATLAB Graphical Programming by César Pérez López, 2014.

‘MATLAB is extremely popular with a wide range of researchers from all sorts of disciplines. It has a very user-friendly interface and extensive visualization and numerical computation capabilities.’ in Dynamical Systems with Applications using MATLAB by Stephen Lynch, 2004.

‘MATLAB is a powerful programme, which naturally lends itself to the rapid implementation of most numerical algorithms.’ in An Introduction to Programming and Numerical Methods in MATLAB by Steve Otto and James P. Denier, 2005.

(d) A chart on the opponent’s print advertisements and a selection of promotional and advertising paper materials (Exhibit 4) – the chart lists various print publications in most of the EU member states, issued in the period from 2013 to 2018. Some advertising materials in French, Italian, Spanish and English have also been provided, which bear a copyright notice for 2016 or 2017.

(e) Screenshots of and materials downloaded from the opponent’s website illustrating dedicated links to the main site for a number of countries within the European Union, among others Netherlands, Sweden, Germany, Italy, Spain, France, United Kingdom (Exhibit 5). The screenshots were taken on 24/10/2018 and they all have the same structure. The respective English language versions introduce MATLAB with the headline ‘Millions of engineers and scientists trust MATLAB’.

(f) A chart on the opponent’s digital advertising through Google, Facebook, Twitter, LinkeIn and Quantcast (Exhibit 6) - the chart provides information on the impressions and generated clicks in various EU member states in the years from 2010 to 2018, as well as on the related expenditures.

(g) Screenshots of and materials downloaded from the opponent’s MATLAB Facebook, Google+ and YouTube social media accounts (Exhibit 7) – the materials show as at 24/10/2018 over 866 000 followers on Facebook, 132 000 subscribers on YouTube, 74 000 followers on Google+ and over 53 000 followers on Twitter. The posts and information appear in English.

(h) Screenshots of and materials downloaded from the opponent´s website and from third party websites on various events sponsored by the opponent (Exhibit 8) – the materials show a number of events that took place between 2010 and 2019 in various EU member states, with the aim of promoting and discussing the features and novelties in MATLAB software. Such events by way of example are MATLAB Expos, MATLAB Tours, MATLAB Computation Finance Conference. Some of the materials also give information on competitions of students, hosted by the opponent, where the opponent’s products, inter alia MATLAB software, are used as competition tools, e.g. Mission on Mars Robot Challenge.

(i) Screenshots of and materials downloaded from the opponent´s website on competitions and seminars, organised by the opponent (Exhibit 9) – information provided on the winners in the Winner’s Circle in 2018 and 2017, in (MATLAB &) Simulink Student Design Challenge in the period from 2012 to 2018, Mobile Devices Challenge in 2017, where the participants used (inter alia) MATLAB software.

(j) Screenshots of and materials downloaded from the opponent´s website and third party websites on courses offered by the opponent in the EU (Exhibit 10) – the screenshots provide information on courses and trainings offered by the opponent on MATLAB software and its features in various EU member states, as well as MATLAB-related courses, lectures and seminars, offered at various EU-based universities. The provided materials relate to courses and trainings available from 2008 to 2019.

(k) Screenshots of and materials downloaded from the opponent´s website – on the presence of the opponent with offices in various EU member states (Exhibit 11) – the screenshots indicate that the opponent has physical offices in a number of EU member states, among others the Czech Republic, Sweden, UK, Germany, Poland, Ireland, Spain, France, the Netherlands.

(2) Evidence submitted on 13/05/2019

(ii) Second witness statement of the Vice President of Marketing of the opponent, dated 09/05/2019, according to which the opponent sells MATLAB products as standalone software products that its customers download onto a computer or a network. The statement also briefly introduces the rest of the submitted materials, which are structured as exhibits to it. The numbering of the exhibits continues the one from the previous witness statement and the exhibits are the following:

(a) Unsolicited media attention received by the opponent (Exhibit 12) – various articles from different online media are provided, mostly in German and fewer in English. The articles have been published between 2010 and 2018 inclusive. The articles in English are dedicated to MATLAB software. On the face of the provided materials most of German-language articles discuss MATLAB Expos or MATLAB software (and tools).

(b) Media reports on awards of products of the opponent in the years 2017, 2018 and 2019 (Exhibit 13) - the screenshots provide information on awards, granted to the opponent’s products, none of which however appears to be for its MATLAB product.

(c) Screenshots of and materials downloaded from the opponent’s website on offers for sale of MATLAB software from the opponent’s regional websites in the EU (Exhibit 14) – the screenshots show that license to use MATLAB software is offered on and can be purchased online on the regional websites of the opponent, as directed to the consumers of many EU member states (e.g. UK, Sweden, Denmark, the Netherlands, Germany, Austria, Italy, Spain, Portugal, Ireland).

(d) Price sheets for MATLAB products (Exhibit 15) – the price lists are for MATLAB software and various MATLAB tools and related trainings. They are effective as of March 2019; part of them are not specifically designated to a territory, with the prices set in euros and others are directed at specific territories, such as Denmark, UK and Sweden.

(e) Print advertisements of MATLAB (Exhibit 16) – scans of several advertisement of, inter alia, MATLAB software, in print magazines in Swedish, German and English, issued in the period from June 2017 to December 2018, part of which show a robot, developed with the use of MATLAB software.

(f) Spreadsheet on the opponent’s digital advertising between 2010 and 2018 (Exhibit 17) - the chart provides information on the impressions and generated clicks in various EU member states in the years from 2010 to 2018, as well as on the related expenditures.

(g) Spreadsheet on MATLAB-related events in EU member states from 2015 to 2018 (Exhibit 18) – the number of organised events is given per the following categories: large event (MATLAB Conference/Tour), large event – MATLAB Tour, MATLAB Research Summit, MATLAB Seminars, Trade Shows, MATLAB Webinars, MATLAB Research Conferences. The grand total of all events in the years from 2015 to 2018 including is 5 210.

(h) Spreadsheet on MATLAB-related training sessions in EU member states from 2014 to 2018 (Exhibit 19).

It is noted that in its final observations of 25/11/2019 the opponent submitted an additional witness statement. However, in the present case, the issue of whether or not the Office may exercise the discretion conferred on it by Article 95(2) EUTMR to take into account this additional evidence can remain open, as the evidence submitted within the time limit is sufficient.

It should be recalled at the outset that the Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is basis.

When assessing genuine use, the evidence in its entirety must be considered. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may sill indicate genuine use.

With respect to the probative value of the submitted materials, it is relevant to note that as a rule of thumb, evidence stemming from the opponent or related parties are considered of lower probative value when compared with materials originating from independent third parties. However, this does not automatically prevent the Opposition Division from taking into consideration evidence from the opponent or related parties.

In order to assess the probative value of a document, it is necessary first and foremost to determine the credibility of the information that it contains. It is then necessary to take account of the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, on its face, the document appears sound and reliable (09/12/2014, T‑278/12, PROFLEX, EU:T:2014:1045, § 50 and the case-law cited).

As far as the written statements are concerned, Article 10(4) EUTMDR expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Based on the case-law, where a statement of that kind has been issued, probative value can be attributed to that statement if it is supported by other evidence (13/05/2009, T‑183/08, jello SCHUHPARK, EU:T:2009:156, § 39; 12/03/2014, T‑348/12, SPORT TV INTERNACIONAL, EU:T:2014:116, § 33)

In the case at hand, it is noted that the submitted written statements to a great extent serve the purposes of introducing the rest of the submitted materials. In other words, most of the statements contained therein are corroborated and detailed by the additionally submitted documents. Separately, while part of the furnished materials stem from the opponent (e.g. information from its website and documents created by it, like charts) these documents are corroborated by documents from independent sources, such as books, screenshots from third party websites and press articles.

Analysis of the evidence of use

Place of use

The submitted materials, such as the screenshots from various website showing that universities in various member states are using MATLAB software under a license, the offers for sale, and the advertising-related materials indicate that the territory of use is the European Union. The materials appear in various EU languages, the prices are offered in EUR and other member states’ currencies, the offers for sale appear in various EU languages through regional-based websites, promotional events are carried out in different member states and entities physically located in different member states have been granted the license to use the respective software.

Consequently, the evidence of use filed by the opponent contains sufficient indications concerning the place of use.

Time of use

Part of the evidence is undated, another part relates to the relevant period, while another relates to periods before or after the relevant period.

Part of the promotional materials and initiatives (print advertising, various MATLAB sponsored events) and the acquisition of licenses to use MATLAB software by part of the university have occurred during the relevant period. Even though some of the materials have been retrieved or created after the relevant period, they do demonstrate use during the relevant period. It is clear from the case law that provided evidence relied on to demonstrate genuine use relates to use made during the relevant period, it cannot be required that that evidence was itself established during that relevant period (30/01/2020, T‑598/18, BROWNIE, EU:T:2020:22, § 38).

Separately, evidence referring to use made outside of the relevant timeframe may be taken into account if they may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C 259/02, Laboratoire de la mer, EU:C:2004:50). In the case at hand, part of the evidence dated outside of the relevant period, for instance the screenshots dated in 2018 but after the end of the relevant period, serve to show continuity and a trend and method of use that were constant over time.

As for undated evidence, according to the case-law, material submitted without any indication of date of use may, in the context of an overall assessment, still be relevant and taken into consideration in conjunction with other pieces of evidence that are dated (17/02/2011, T-324/09, Friboi, EU:T:2011:47, § 33). In this regard, some of the undated materials, for instance the offers for sale of licenses to use, as available on the opponent’s website, serve to show the nature of use of the sign, namely a software product offered for use to third parties.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely the written statements, screenshots on use of MATLAB software by universities and materials on promotional events and initiatives, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. As can be seen, the promotional events and initiatives conducted during the relevant period had covered a large part of the EU member states and had occurred during the entire relevant period. For the sake of completeness, it is noted that based on the provided information on the various tours, seminars, conferences, trainings, competitions and the like, shown by the opponent, it is clear that their main goal was to promote the opponent’s goods, since they either were dedicated to discuss features, novelties and various aspects of its goods, the goods at issue were used in the competition and/or the right to use such goods was granted as an award to the winners in such competitions.

While the materials generally show the existence of effective license agreements with a significant number of entities in various countries, it is true that the information provided by the opponent, which is corroborated by third party materials, does not relate to licensing to use within the relevant period for many of the entities. Nevertheless, there are indications on licenses granted/renewed with universities (Exhibit 1) in various countries during the relevant period.

Consequently, a reading of the materials in their entirety leads to conclusion that the opponent has provided sufficient indications concerning the extent of use of the earlier mark.

Nature of use

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

The materials show use of the mark in accordance with its functions and as registered.

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory for at least some of the invoked goods in Class 9.

Based on the submitted evidence, it is considered that they show use at least for software for numerical calculation, analysis and data visualization, which is included in the general category of the opponent’s computer software in Class 9.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

Thus, the Opposition Division will consider the goods software for numerical calculation, analysis and data visualization in Class 9 in its further examination of the opposition. The use of other goods will be considered only if deemed necessary in view of the findings below.

REPUTATION — ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to the earlier European Union trade mark registration No 502 138 ‘MATLAB’, for which the opponent claimed repute in the EU.

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

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

 The signs must be either identical or similar.

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

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

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

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

a) Reputation of the earlier trade mark

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

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

In the present case, the contested trade mark was filed on 02/01/2018. Therefore, the opponent was required to prove that the above trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, and for which use has been proven, namely:

Class 9: Software for numerical calculation, analysis and data visualization.

The opposition is directed against the following goods and services:

Class 9: Computers; electronic publications, downloadable; computer programs [downloadable software]; humanoid robots with artificial intelligence; Downloadable smart phone applications (software); Software for optical character recognition; Optical character recognition apparatus [OCR]; 3D scanners; Video games programs [computer software]; Image scanners.

Class 28: Games; apparatus for games; controllers for game consoles; toys; remote-controlled toy vehicles; controllers for toys; toy robots; building blocks [toys]; musical toys; puzzles.

Class 41: Teaching; Training; nursery schools; organization of competitions [education or entertainment]; arranging and conducting of colloquiums; arranging and conducting of conferences; arranging and conducting of congresses; organization of exhibitions for cultural or educational purposes; toy rental; Training courses; arranging and conducting of training courses.

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.

As already said above, on 25/10/2018 the opponent submitted evidence to support its claim of reputation, as listed above.

Furthermore, on 13/05/2019, in response to the applicant’s proof of use request, the opponent submitted further evidence, as listed above.

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.

In this regard, the Opposition Division 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. In the exercise of its discretion pursuant to Article 95(2) EUTMR, the Opposition Division decides to take into account the additional evidence. This is because the additional evidence merely strengthens and clarifies the evidence submitted initially, as it does not introduce new elements of evidence but merely enhances the conclusiveness of the evidence submitted within the time limit.

The furnished evidence shows that the earlier mark has been subject to a long-standing and intensive use in relation to a software product for computing, analysis and visualization designated to serve engineers, scientists and researchers and students in engineering and sciences in their analyses and experimental work. However, the materials show that the software and its functionalities have a much broader application and actual use, such as for example in the banking and finance sector. Furthermore, it is used not only by universities and research organisations, but also by various businesses, bodies and organisations, as further analysed below.

The materials show that a huge number of EU-based universities use the software and also make it available to its students and faculty members as a necessary tool for their studies. The availability of the software in most universities and research units of various entities is recognised in various publications, stating that it ‘is near to ubiquitous at universities around the world’ and ‘available in most academic institutions, in all universities and in the research departments of many companies’. It is further acknowledged that MATLAB software is ´well developed and widely used for a variety of mathematical problems arising from both theory and applications´ and ´extremely popular with a wide range of researchers from all sorts of disciplines´. The fact that MATLAB courses are even offered as part of the study program at universities is an indication on its own that MATLAB software is considered an essential and necessary tool in the respective scientific fields.

The number of books mentioned in the evidence that are dedicated to or using MATLAB software as a main tool for their analysis further verifies the popularity of MATLAB software. Some of these books have been published in several languages and several editions which not only attests the quality of the respective works but also the noteworthiness of the topics discussed therein. This is further reinforced by the shown significant number of online purchases (downloads) of the books from Springer website, account being taken of the fact that it is specialised literature directed at specialised public.

While professionals, researchers and students in the fields of engineering and sciences represent a significant part of the users of the software, the materials show that MATLAB software is known in many more fields, where it is used for various purposes. For example, a number of the books submitted refer to uses of MATLAB software in the fields of finance and statistics. Furthermore, the list of entities and bodies using the software and the screenshots showing uses of such entities (Exhibit 2), indicate quite a broad application of the software by various types of users, including not only universities and research organisations and their students and members, but also businesses in various industries (e.g. manufacturing of vehicles, powertrain systems, packaging and paper, pharmaceuticals, banks and asset management undertakings, energy providers), governmental bodies (e.g. the European Space Agency) and not-for-profit organisations (e.g. Nobel Foundation). It is even evidenced that the software has its benefits not only for graduate students but also for undergraduates (e.g. Simulation of ODE/PDE Models with MATLAB, OCTAVE and SCILAB, Scientific and Engineering Applications by Alain Vande Wouwer, Philippe Saucez, Carlos Vilas, 2014, where it is stated that the book ‘is suitable as a final year undergraduate course or at the graduate level.’; Exercises in Computational ,Mathematics with MATLAB, by Tom Lyche, Jean-Louis Merrien, 2014, where the book is said to be aimed at ‘advanced undergraduate and beginning graduate students who need a background in numerical analysis and computational science, including students of mathematics, statistics, computational physics and engineering’).

Consequently, contrary to the applicant´s arguments, while indeed the public is a rather specialised public, it is not as narrowly defined as the applicant maintains. Thus, the software targets and is known by professionals, students (graduate and ungraduated) and researchers in engineering and sciences, finance and banking, as well as by various businesses active in various industries, administrative bodies and even not-for-profit organisations.

A share in the wide recognition of MATLAB computing and visualisation software by the public at issue is also attributable to the ongoing advertising efforts of the opponent, primarily taking the form of various specialised forums (expos, seminars, conferences, tours, competitions) organised in various EU member states. As evidenced also by independent sources, such events having as (one of) their main topics MATLAB software, its functionalities and uses, enjoyed significant interest from the targeted audience.

In summary, the submitted materials show that the earlier mark MATLAB is widely known in relation to a specialised computing, analysis and visualisation software. Because of the wide usage of MATLAB software and the resulting attention on its features and released novelties by the specialised media, as well as the various MATLAB-dedicated forums, the earlier mark enjoys a high degree of recognition among the relevant public, as defined above. The brand is highly recognised for its capabilities, versatility in various fields of science, high efficiency and accuracy.

Lastly, it is true, that as the applicant states, the opponent has not provided information on its market share, generated sales volumes or related data. However, each case is to be separately assessed, as the criteria as mentioned above are not obligatory requisites all of which should be cumulatively satisfied/shown for the purposes of proving reputation, but are only guidance on criteria that could be relevant.

Considering the evidence in its entirety and the number of independent sources referring to MATLAB software as widely used in the respective fields at least in the 2000s and 2010s, in conjunction with the rest of the materials showing actual use of the software throughout the EU and MATLAB advertising initiatives, specific information on the market share of the opponent or generated turnovers or volumes of sales is not deemed essential for the assessment of its reputation claim.

On the basis of the above the Opposition Division concludes that the earlier trade mark has a reputation in the European Union for software for numerical calculation, analysis and data visualization.

b) The signs

MATLAB
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

It is considered that the earlier mark will likely be split by the relevant pubic into ‘MAT’ and ‘LAB’. It has been confirmed by the case-law that a word sign might be broken down into elements which, for the relevant consumers, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T 146/06, Aturion, EU:T:2008:33, § 58).

The element ‘LAB’, which is the short for ‘laboratory’ in English, will likely be understood not only by the English-speaking public, but the entire relevant public. Account is taken of the fact that if not all, at least most of the EU languages have very similar equivalents to ‘laboratory’ and that the relevant public specialised or specialising in the relevant fields is likely to be familiar with English-language terminology, such as the word ‘laboratory’. Additionally, the goods, being specialised software dedicated to help professionals, researchers and students in their research and analysis, would further prompt such understanding of the element, since a laboratory is a common space for research and experimental work. In this regard, it is considered that this element is weak. Contrary to the applicant’s opinion, the Opposition Division does not consider it non-distinctive, because it does not directly inform of characteristic of the goods, but only alludes to the fact that the goods might be used in the research and experimental field.

As for the first element ‘MAT’, due to the goods at issue, the specialised public would either see in it mathematic-related connotations (as an abbreviated form for ‘mathematics’) or matrix-related associations (‘mat’ being the short for matrix in English language). In this regard, the element’s distinctiveness is also low. Similarly to ‘LAB’, the abovementioned meanings do not directly describe the goods or their characteristics, but only allude to possible fields of use or employed methods/functionalities. Therefore, this element is not considered to be devoid of distinctiveness, which might have been the case if the element evoked meanings such as calculation, visualisation or analysis, since they are among the main features of the software at issue.

As for the contested sign, for similar reasons, the public is likely to identify the element ‘LAB’ as explained above and which will be weak in relation to the goods and services at stake. In the context of these goods and services, this element might allude to their use for research and experiments or that they are related in a certain manner to research and experiment, and/or their scientific focus or use .

As for ‘MATATA’, which is the first part of the verbal element of the sign, it is not likely to evoke any concept. It is acknowledged that because of the popularity of Disney’s movie The Lion King and its song ‘Hakuna Matata’, it is not excluded that some consumers would recognise in ‘Matata’ a familiar string of letters, which however does not evoke a meaning. For another part of the public ‘Matata’ will be just an unfamiliar meaningless string of letters. In any event, ‘MATATA’ is normally distinctive.

Considering that the contested sign is represented as a slightly stylised single verbal element without any additional elements, a visually dominating element cannot be identified.

Visually, the signs coincide in the sequence of letters ‘MAT’ at the beginning of both signs and ‘LAB’ at the end. In fact, the two elements that make up the earlier are entirely contained in the contested sign. The marks differ in the middle letters of the contested mark, namely ‘ATA’.

Considering the fact that the differences between the signs are limited to the string of letters ‘ATA’ in the middle of the contested sign and to the slight stylisation, despite the limited distinctiveness of the elements of the earlier mark and of ´LAB´ in the contested one, the signs are considered similar to an average degree.

Aurally, due to the identical letters ‘MAT’ at the beginning and ‘LAB’ at the end of the signs, they are considered to be at least similar to a below average degree. In addition to the considerations explained in the visual comparison part, which are relevant here as well, it is also taken into account that based on the different pronunciation rules in some languages, the vowel in the coinciding letters ‘MAT’ might be pronounced differently in both signs by some parts of the public, while for others they will be identical in terms of pronunciation.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. On account of the identical concept of the element ‘LAB’ in both signs, they are considered conceptually similar to a low degree.

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.

c) The ‘link’ between the signs

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

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

 the degree of similarity between the signs;

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

 the strength of the earlier mark’s reputation;

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

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

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

As regards the degree of similarity between the marks at issue, 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 the case at hand, the signs were found visually similar to an average degree, aurally similar at least to a below average degree and conceptually lowly similar. It is especially relevant that both signs have the same structure, juxtaposing the element ‘LAB’ in second place with another element of identical beginning before it. Even though, as mentioned above ‘MAT’ in the earlier mark will be linked to a specific meaning, there is nothing to prevent the public from identifying the identical ‘MAT’ beginning in the contested sign, where for the entire relevant public ‘MATATA’ will not be perceived as a meaningful component.

While, as noted above, the elements that the earlier mark is composed of are of reduced distinctiveness, thus rendering the inherent distinctiveness of the earlier mark as a whole low, this may not by itself be decisive in the present assessment. In this regard, it has been established that the earlier mark enjoys significant reputation in the European Union and thus, albeit initially weak, the extensive use throughout the European Union and its wide recognition, has significantly heightened the mark’s distinctiveness.

Another factor to consider when assessing whether there is a ‘link’ between the signs are the relevant goods and services.

As noted above, the earlier mark is reputed for a specialised software for computing and visualisation, wherefore naturally its reputation is amongst the relevant consumers of such goods, namely the specialised public as defined above.

Part of the contested goods in Class 9 are identical to the reputed goods, as they are included in or overlapping with them (computer programs [downloadable software]; downloadable smart phone applications (software)). Another part of the contested goods in this class are at least lowly similar to the reputed goods, either because they have the same nature (software products) and might originate from the same company (software for optical character recognition; video games programs [computer software]), or because they are hardware for the functioning of which the opponent’s goods might be indispensable (computers) and therefore target the same public through the same distribution channels, or because they are, inter alia, specialised publications (electronic publications, downloadable) originating from the same undertaking, targeting the same public through the same distribution channels as the opponent´s goods.

As for the rest of the contested goods in this class, that is humanoid robots with artificial intelligence; optical character recognition apparatus [OCR]; 3D scanners; image scanners, even if they might not be found similar, account is taken of the fact that these are IT goods, which might, inter alia, be used in the field of engineering and various scientific fields, as research and analysis tools.

Most of the contested services in Class 41 are essentially training services and services that consist of organising various events, which might, inter alia, be with educational purposes. As seen above, one of the vastly implemented methods of promoting the opponent’s reputed goods are through various events, such as competitions, seminars, courses and the like. Furthermore, there is no clear delimitation of the purpose of forums like competitions and exhibitions, where often educational purposes are achieved through entertainment and vice versa, and often cultural forums simultaneously satisfy educational needs. To that extent, the fact that part of the contested services in this class also have entertainment or cultural purposes is considered immaterial in the context of the present assessment. Finally, given the broad formulation of the contested services in this class, they may inter alia relate to IT-focused forums or forums dedicated to scientific and engineering-related topics, thus targeting the same specialised professional public. Furthermore, the link between the reputed goods and these services is illustrated also in the evidence where we can see that among the main users of the software are universities, that there are many courses and publications on the subject matter and, not least, that the opponent actively develops and commercialises the product by means of courses, competitions and other forums of similar nature.

In the light of the foregoing, it is considered that the relevant consumers will clearly establish a link between the signs in relation to the contested goods in Class 9 and the contested services in Class 41 (with the exceptions detailed below). Account is taken of the fact that the marks at issue reveal certain degree of similarity, that the earlier mark is highly reputed and that the mentioned contested goods and services may either belong to the same market sector (Class 9) or still be directly linked (Class 41) as they are focused at the same industry field and public, both providing the latter with tools and knowledge to enhance their work results, where it is even possible that the services at issue are directly dedicated to the reputed goods.

When it comes to the contested goods in Class 28 and nursery schools and toy rental in Class 41, while the existence of a link is not that obvious, it is considered that a link may not be entirely ruled out. In particular, the contested goods in Class 28 are essentially toys and games. In this sense, they, as well as toy rental in Class 41, might include high-technology games and toys, such as robots, specialised games for adults, as well as games and toys that help children understand various processes in the world, including toy kits for various scientific experiments. Similarly, educational methods employ various techniques that help children learn empirically, through experiment and interaction with their environments. Even though it is noted that the public of the goods in this class is the general public and that when acting in that capacity the specialised public of the reputed goods would have different expectations, it may not be excluded that the consumers make a link with the contested sign in relation to Class 28 goods and services in Class 41, which offer learning through experience/experiment to children or which are high technology toys/games. An example in this sense is the product, offered by the applicant as MatataBot, regarding which the opponent has provided evidence. In particular, this is a coding robot, designated for children between 4 and 9 years of age. It is explained to be a robot car, which ‘helps kinds learn about STEAM (Science, Technology, Engineering, Arts and Mathematics)’. Furthermore, it is said that Matatalab is founded by a team of four robot developers and that ‘the team behind strives to provide an equal opportunity learning experience for children through simple logic and robotics.’ It is especially relevant here that the reputed software may inter alia be and is used for the development of advanced humanoid robots, as evidenced also by some of the furnished advertising materials, described above.

In this particular context, and upon taking into account the strong reputation of the earlier mark, it is considered that when the relevant consumers are confronted with such games and toys, as well as the mentioned services, the contested sign would trigger reminiscences with the reputed earlier mark. For these reasons, a link is considered to exist also regarding the contested goods in Class 28 and nursery schools and toy rental in Class 41.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that, when encountering the contested sign in relation to all of the contested goods and services, the relevant consumers will be likely to associate it with the earlier mark, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96).

d) Risk of injury

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

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

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

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

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

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

The opponent claims that use of the contested trade mark would take unfair advantage of and be detrimental to the distinctive character and reputation of the earlier 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).

The opponent bases its claim on the following.

 The MATLAB mark has an inherent economic value which is independent of and separate from that of the goods and services for which it is registered;

 The consumer, without necessarily confusing the commercial origin of the goods/services in question, would be attracted by the contested mark and will buy the goods/services covered by it on the ground that it bears that mark, which is highly similar to the earlier mark;

 The applicant attempts, through the use of a sign highly similar to the MATLAB mark to ride on the coat-tails of this mark in order to benefit from its power of attraction, reputation and prestige, and to exploit, without paying any financial compensation and without being required to make efforts of his own in that regard;

 The applicant’s use of the contested mark would (and, in fact, does) take advantage of the substantial reputation of the MATLAB mark. Consumers who draw connection between both signs will be predisposed to assume that the applicant’s goods/services bear similar attributes including inter alia in terms of innovation, quality and functionality. For this reason, the applicant will gain a commercial advantage over its competitors in the marketplace by trading upon the image and reputation of the opponent’s respected MATLAB mark and the positive characteristics which it project. However, that advantage would not be derived from the applicant's own marketing efforts, investment, skill, and innovation. Rather, it would be derived from its use of a mark similar to the Opponent’s, thus associating itself with the opponent’s history, innovation, skill, marketing efforts, and investment;

 The applicant’s use/registration of the contested sign is a clear example of taking unfair advantage, taking into account the identical and/or similar goods/services for which the opponent enjoys an enhanced reputation. In light of the significant distinctiveness subsisting in the MATLAB mark, use of the contested mark will inevitably call to mind the goods and services in respect of which the earlier mark is used. Consumers will therefore either believe that the goods and services in question originate directly from the opponent, or alternatively may consider there is an existing licensing arrangement in place between the opponent and the applicant;

 Use of the contested mark derives an unfair and unjustifiable benefit from the valuable reputation earned and enjoyed by the opponent as a result of its efforts in successfully marketing and developing the earlier mark to portray its famous brand which is recognised and admired by millions of consumers throughout the European Union.

According to the Court of Justice of the European Union

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

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

In the first place, it has to be recalled that the contested goods and services are all connected to the earlier reputed goods to a higher or lower extent, as explained in section c) above.

In the second place, the Opposition Division notes that the earlier mark enjoys significant reputation in the European Union in connection with software for numerical calculation, analysis and data visualization. Being praised for its capabilities, versatility in various fields of science, high efficiency and accuracy, MATLAB software is said to be ‘near to ubiquitous at universities around the world’ and ‘available in most academic institutions, in all universities and in the research departments of many companies’. Thus, the earlier mark is widely known as the brand for specialised software, in relation to which it has been subject to a long-standing and extensive use.

Thirdly, it is considered that the ‘good’ and ‘special’ reputation of the earlier mark, in that it conveys a positive message as set out above, and that will be transferred to the contested sign in the minds of the consumers, could positively influence, without any marketing efforts or investment by the applicant on its own, the choice made by consumers as regards goods or services of other producers/providers.

Bearing in mind the foregoing and the arguments put forward by the opponent, the Opposition Division considers that, in view of the link between the earlier reputed goods and the contested goods and services, a substantial part of consumers may decide to turn to the applicant’s goods and services in the belief that the contested sign is somehow linked to the opponent’s reputed mark, thus misappropriating its attractive powers and advertising value. This may stimulate the sales of the applicant’s goods and services, so that without investing or by investing insignificant resources, it generates revenue. Thus, the applicant will be allowed to take a ‘free-ride’ on the investment of the opponent in promoting and building-up goodwill for its 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 in relation to all the contested goods and services.

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.

e) Conclusion

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

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

COSTS

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

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Denitza STOYANOVA-VALCHANOVA

Teodora Valentinova TSENOVA-PETROVA

Helen Louise MOSBACK

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.