OPPOSITION No B 3 051 923

Wind Tre S.p.A., Largo Metropolitana 5, 20017 Rho (MI), Italy (opponent), represented by Barzanò & Zanardo Roma S.p.A., Via Piemonte, 26, 00187 Roma, Italy (professional representative)

a g a i n s t

Thematic Groupe (RCS 790 728 539), 96 boulevard Haussman, 75008 Paris, France (applicant), represented by Edmond Tahar, 14 avenue du Président Wilson, 75116 Paris, France (professional representative).

On 29/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 051 923 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 773 417 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 17 773 417 for the word mark ‘WYND’. The opposition is based on European Union trade mark registrations No 14 284 525 for the figurative mark (earlier mark No 1) and No 751 271 for the figurative mark (earlier mark No 2), and Italian trade mark registration No 1 272 674 for the trade mark (earlier mark No 3) the latter based on goods and services in Classes 9 and 38. The opponent invoked Article 8(1)(b) EUTMR in relation to all the earlier marks and Article 8(5) EUTMR in relation to earlier mark No 2 and 3.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s earlier marks No 1 and 2, as earlier mark No 1 covers the broadest scope of goods and services, and as earlier mark No 2 as such only includes one verbal element.

1. The goods and services

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

Earlier mark No 1

Class 9: Telephone apparatus; IT apparatus; computer software; computer software applications, downloadable; mobile phone applications; downloadable publications; downloadable digital music; downloadable ring tones for mobile phones.

Class 35: Publicity services.

Class 36: Financial payment services.

Class 37: Customer support in the field of telecommunications; maintenance of telephones, hardware.

Class 38: Telecommunications; digital communications services; digital transmission services; digital messaging; transmission of digital information; transmission of digital files; providing access to digital music sites on the internet; providing of digital audio and/or video via telecommunications means; providing of digital music via telecommunications means.

Class 41: Non-downloadable electronic publications; Internet games non-downloadable; providing online music which cannot be downloaded; provision of music (not downloadable) from the internet; providing on-line videos, not downloadable.

Class 42: Providing cloud computing services; maintenance of software.

Earlier mark No 2

Class 9: Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus Telephones, cellular telephones, products and accessories in the telecommunications sector; pre-paid telephone cards for cellular telephones.

Class 38: Telecommunications Services for automatic answering, call waiting, call holding, call forwarding, emergency call, taxi call and reception for short text messages.

The contested goods and services are the following:

Class 9: Science software; Educational software; Software drivers; Adaptive software; Software; Utility software; Multimedia software; Interactive software; Freeware; Downloadable software; Computer software, recorded; Community software; Assistive software; Media software; Testware; Compiler software; Communication software; Computer software; Interfaces for computers; Application software; Decoder software; Telecommunications software; Simulation software; Training software; Editing software; Software for smartphones; Authentication software; Computer software platforms; Downloadable software applications; Financial management software; Business technology software; Civil engineering software; Computer software in the field of electronic publishing; Computer graphics software; Computer software for encryption; Computer telephony software; Software programmable microprocessors; Virtual reality software; Factory automation software; Computer e-commerce software; Instant messaging software; Business management software; Downloadable computer utility software; Embedded operating software; Data compression software; Software development kit [SDK]; Software for online messaging; Games software; Computer programmes for data processing; File sharing software; Workflow software; Computer software for advertising; Internet access software; Downloadable computer security software; Software for ensuring the security of electronic mail; Computer software to automate data warehousing; Computer database servers; Databases; Coin-operated mechanisms; Downloadable mobile applications for the management of data; Downloadable mobile applications for the management of information; Software for processing electronic payments to and from others; Electronic payment terminals; Apparatus for electronic payment processing; Terminals for electronically processing credit card payments; Computer search engine software.

Class 35: Advertising; Business management; Business administration; Assistance and advice regarding business organization; Assistance and advice regarding business management; Assistance and advice regarding business organisation and management; Administration of business affairs; Administration of foreign business affairs; Administration of the business affairs of franchises; Provision of commercial and business contact information; Negotiation of commercial transactions for third parties; Business analysis, research and information services; Business management and organization consultancy; Book-keeping; Rental of advertising time on communication media; Intermediary services relating to the rental of advertising time and space; Publication of advertising literature; Public relations services; Database marketing; Systemization of information into computer databases; Compilation of computer databases; Computerized file management; Collating of data in computer databases; Advertising services provided via a data base; Advertising services relating to data bases; Management and compilation of computerised databases; Updating and maintenance of data in computer databases; Compilation of information into computer databases; Compilation and systematisation of information in databanks; Collection and systematisation of information into computer databases; Updating of business information on a computer data base; Provision of commercial business information by means of a computer database; Compilation and input of information into computer databases; Business information services provided on-line from a computer database or the internet; Management assistance in business affairs; Business management assistance; Search engine optimisation; Search engine optimization for sales promotion.

Class 36: Payment processing; Insurance underwriting; Banking; Online banking; Financial management services provided via the Internet; Telebanking; Financial services provided by electronic means; Financial services provided over the Internet and telephone; Financial services provided over the telephone and by means of a global computer network or the internet; Monetary services; Financial services relating to business; Financial services provided to partnerships; Electronic check acceptance services; Finance services; Treasury services; Trade finance services; On-line bill payment services; Online business banking services; Automated payment services; Electronic payment services; Financial payment services; Financial pre-payment services; Remote payment services; Bank card, credit card, debit card and electronic payment card services; Bill payment services provided through a website; Payment services provided via wireless telecommunications apparatus and devices; Contactless payment services; Acceptance of bill payments; Payment administration services; Providing multiple payment options by means of customer-operated electronic terminals available on-site in retail stores.

Class 38: Telecommunication services; Information about telecommunication; Computer communication and Internet access; Communications services provided over the Internet; Communications via a global computer network or the internet; Electronic transmission of data; Electronic network communications; Telecommunication of information (including web pages); Access to content, websites and portals; Communications services for accessing a data-base; Providing telecommunications connections to a global communication network or databases; Electronic exchange of data stored in databases accessible via telecommunication networks; Transmission and reception [transmission] of database information via the telecommunication network; Provision of telecommunications access to databases and the internet; Communication of information by computer; Data communication by electronic mail; Communication by computer; Communication by electronic mail systems; Communication via virtual private networks; Online document delivery via a global computer network; Message sending via a website; Message sending via computer networks; Electronic message sending, receiving and forwarding; Providing an online interactive bulletin board; Internet based telecommunication services; Telecommunication services provided via Internet platforms and portals; Telecommunication services provided via platforms and portals on the Internet and other media; Digital audio broadcasting; Broadcasting of audiovisual and multimedia content via the Internet; Communication of information by electronic means; Data communication by electronic means; Providing access to telecommunication networks; Communications services for the exchange of data in electronic form.

Class 42: Computer hardware development; Design and development of computer hardware; Research relating to the development of computer hardware; Software as a service [SaaS]; Configuration of computer software; Computer systems integration services; Software development; Computer software design; Repair of computer software; Maintenance of computer software; Editing of computer programs; Software creation; Installation of computer software; Computer software consultancy; Testing of computer software; Copying of computer software; Rental of computer software; Software engineering; Writing of computer software; Design of graphic software systems; Design of driver software; Development of driver software; Troubleshooting of computer software problems; Services for the writing of computer software; Installation and maintenance of computer programs; Updating of computer software; Leasing computer facilities; Installation, repair and maintenance of computer software; Operating search engines; Providing search engines for the internet; Search engine design services; Providing Internet search engines with specific search options; Providing search engines for obtaining data on a global computer network; Creation of internet web sites; Technical drawing; Industrial design.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the applicant’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 9

The comparison below is based on earlier mark No 1.

Computer software is identically contained in both lists of goods (including synonyms).

The contested computer database servers are a specific type of servers. In computing, ‘a server is part of a computer network which does a particular task, for example storing or processing information, for all or part of the network’ (https://www.collinsdictionary.com/dictionary/english/server on 28/08/2019). It follows that a server may both refer to a computer program (software) and a device (hardware). For this reason, they overlap with the opponent’s computer software. Therefore, they are considered identical.

The contested science software; educational software; software drivers; adaptive software; software; utility software; multimedia software; interactive software; freeware; downloadable software; computer software, recorded; community software; assistive software; media software; testware; compiler software; communication software; interfaces for computers; application software; decoder software; telecommunications software; simulation software; training software; editing software; software for smartphones; authentication software; computer software platforms; downloadable software applications; financial management software; business technology software; civil engineering software; computer software in the field of electronic publishing; computer graphics software; computer software for encryption; computer telephony software; virtual reality software; factory automation software; computer e-commerce software; instant messaging software; business management software; downloadable computer utility software; embedded operating software; data compression software; software development kit [SDK]; software for online messaging; games software; computer programmes for data processing; file sharing software; workflow software; computer software for advertising; internet access software; downloadable computer security software; software for ensuring the security of electronic mail; computer software to automate data warehousing; databases; downloadable mobile applications for the management of data; downloadable mobile applications for the management of information; software for processing electronic payments to and from others; computer search engine software are included in the broad category of the opponent’s computer software. Indeed, even databases are essentially specialised software containing structured data. Therefore, the contested goods above are identical to the opponent’s computer software.

The contested software programmable microprocessors and the opponent’s computer software are complementary. Furthermore, they are sold through the same distribution channels, target the same end users and are produced by the same undertakings. Therefore, they are similar.

The comparison below is based on earlier mark No 2

Coin-operated mechanisms are identically contained in both lists of goods and services (including synonyms).

The contested electronic payment terminals; apparatus for electronic payment processing; terminals for electronically processing credit card payments are included in the broad category of the opponent’s data processing equipment. Therefore, they are identical.

Contested services in Class 35

The contested advertising; rental of advertising time on communication media; intermediary services relating to the rental of advertising time and space; publication of advertising literature; public relations services; database marketing; advertising services provided via a data base; advertising services relating to data bases; search engine optimisation; search engine optimization for sales promotion overlap with or are synonyms (e.g. ‘public relations services’) of the opponent’s publicity services (earlier mark No 1). Therefore, they are identical.

The contested business management; provision of commercial and business contact information; business analysis, research and information services; management assistance in business affairs; business management assistance; assistance and advice regarding business organization; assistance and advice regarding business management; assistance and advice regarding business organisation and management; business management and organization consultancy; provision of commercial business information by means of a computer database; business information services provided on-line from a computer database or the internet and the opponent’s publicity services (earlier mark No 1) have the same purpose, target the same end users and are provided by the same undertakings. Therefore, they are similar to a low degree.

The remaining contested services in this class are dissimilar to all the goods and services invoked for both earlier marks for the reasons set forth. The contested book-keeping is maintaining precise records of business transactions (administrative services). The contested systemization of information into computer databases; compilation of computer databases; computerized file management; collating of data in computer databases; management and compilation of computerised databases; compilation of information into computer databases; compilation and systematisation of information in databanks; collection and systematisation of information into computer databases; compilation and input of information into computer databases; updating and maintenance of data in computer databases; updating of business information on a computer data base are mainly administrative data processing services. The contested business administration; administration of business affairs; administration of foreign business affairs; administration of the business affairs of franchises; negotiation of commercial transactions for third parties are mainly commercial assistance and administration services.

The opponent’s goods and services in Classes 9, 35, 36, 37, 38, 41 and 42 invoked for the earlier marks in question, are mainly: apparatus and instruments for scientific or research purposes, audiovisual and information technology equipment, as well as safety and life-saving equipment; services rendered by publicity establishments primarily undertaking communications to the public, declarations or announcements by all means of diffusion and concerning all kinds of goods or services; services rendered in financial and monetary affairs; telecommunications customer support services and services engaged in the maintenance of objects to their original condition; services allowing at least one person to communicate with another by a sensory means. Such services include those that allow one person to talk to another, transmit messages from one person to another, and place a person in oral or visual communication with another (radio and television); services rendered by persons or institutions in the development of the mental faculties of persons or animals, as well as services intended to entertain or to engage the attention; and services provided in relation to theoretical and practical aspects of IT services — such services are provided by members of professions such as computer programmers.

Apart from the fact that these goods and services target or may target the same end users, they are of a different nature, have different purposes, follow different methods of use and are not complementary nor in competition. Furthermore, they are sold through different distribution channels and usually provided by different undertakings. As the remaining contested services have no relevant points in common with the opponent’s goods and services invoked as basis for earlier mark No 1 and 2, they are dissimilar.

The opponent has submitted that all the services in this Class are identical or similar to the goods and services protected by the earlier marks given that the contested services depend on software, data processing equipment and computers as well as publicity service, for example. The Opposition Division does, however, not concur, as the fact that the services may be used in conjunction with the goods in Class 9 (such as software) is not an indication of similarity, since there is no interdependence in the sense of complementarity. Indeed, consumers seeking the kind of administrative processing services in Class 35 that are at issue would not believe that the same undertaking was responsible for software, for example. Software is composed of programs, routines, and symbolic languages that control the functioning of hardware and direct its operation, whilst the services at issue are office services or revolve around business administration. The latter encompass services designed to organise and run a business and, generally speaking, a professional who helps with the execution of business decisions or the performance of business operations will, for example, not offer strategies concerning promotional efforts. Consequently, the findings on dissimilarity are maintained.

Contested services in Class 36

Financial payment services are identically contained in both lists of services (earlier mark No 1).

The contested finance services include, as a broader category, the opponent’s financial payment services (earlier mark No 1). Since the Office cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested payment processing; banking; online banking; financial management services provided via the Internet; telebanking; financial services provided by electronic means; financial services provided over the Internet and telephone; financial services provided over the telephone and by means of a global computer network or the internet; monetary services; financial services relating to business; financial services provided to partnerships; electronic check acceptance services; trade finance services; on-line bill payment services; online business banking services; automated payment services; electronic payment services; financial pre-payment services; remote payment services; bank card, credit card, debit card and electronic payment card services; bill payment services provided through a website; payment services provided via wireless telecommunications apparatus and devices; contactless payment services; acceptance of bill payments; payment administration services; providing multiple payment options by means of customer-operated electronic terminals available on-site in retail stores are included in, or overlap with, the opponent’s financial payment services (earlier mark No 1). Therefore, they are identical.

The contested treasury services deals with the collection, management and expenditure of money. These services and the opponent’s financial payment services (earlier mark No 1) have a similar nature and the same overall purpose of dealing with finance, and they are, therefore, complementary. Furthermore, they target the same end users and are provided by the same undertakings, for example banks. Therefore, they are at least similar.

The contested insurance underwriting deals with evaluating the risk and exposures of potential clients and aspects related hereto such as the price of insurance and how much coverage clients should receive. Therefore, these services and the opponent’s financial payment services (earlier mark No 1) have a similar nature. Furthermore, they may be sold through the same distribution channels and may be provided by the same or related undertakings. Therefore, they are similar.

Contested services in Class 38

Telecommunication services are identically contained (including synonyms) in both lists of services (earlier mark No 2).

The contested information about telecommunication; computer communication and Internet access; communications services provided over the Internet; communications via a global computer network or the internet; electronic transmission of data; electronic network communications; telecommunication of information (including web pages); access to content, websites and portals; communications services for accessing a data-base; providing telecommunications connections to a global communication network or databases; electronic exchange of data stored in databases accessible via telecommunication networks; transmission and reception [transmission] of database information via the telecommunication network; provision of telecommunications access to databases and the internet; communication of information by computer; data communication by electronic mail; communication by computer; communication by electronic mail systems; communication via virtual private networks; online document delivery via a global computer network; message sending via a website; message sending via computer networks; electronic message sending, receiving and forwarding; providing an online interactive bulletin board; Internet based telecommunication services; telecommunication services provided via Internet platforms and portals; telecommunication services provided via platforms and portals on the Internet and other media; digital audio broadcasting; broadcasting of audiovisual and multimedia content via the Internet; communication of information by electronic means; data communication by electronic means; providing access to telecommunication networks; communications services for the exchange of data in electronic form are included in the broad category of the opponent’s telecommunications (earlier mark No 1). Therefore, they are identical.

Contested services in Class 42

The contested maintenance of computer software; maintenance of computer programs; software engineering; updating of computer software are equally designated in (also via use of synonyms), or overlap with, the opponent’s maintenance of software (earlier mark No 1). Therefore, they are identical.

The contested computer software consultancy software development; software creation; computer software design; search engine design services; design of graphic software systems; design of driver software; development of driver software and the opponent’s maintenance of software (earlier mark No 1) have a similar nature and method of use. Furthermore they may be complementary. Moreover, they target the same end users and are usually provided by the same undertakings. Therefore, they are similar.

The contested installation of computer software; repair of computer software; editing of computer programs; testing of computer software; troubleshooting of computer software problems; configuration of computer software; installation, repair of computer software; creation of internet web sites; copying of computer software; computer systems integration services; writing of computer software; services for the writing of computer software; design and development of computer hardware; computer hardware development and the opponent’s maintenance of software (earlier mark No 1) may be sold through the same distribution channels. Furthermore, they at least coincide in the end users targeted and are likely to be provided by the same undertakings. Therefore, they are at least similar.

The contested operating search engines; providing search engines for the internet; providing Internet search engines with specific search options; providing search engines for obtaining data on a global computer network and the opponent’s providing cloud computing services (earlier mark No 1) are sold through the same distribution channels, target the same end users and are provided by the same undertakings. Therefore, they are similar.

The contested software as a service [SaaS]; rental of computer software; leasing computer facilities and the opponent’s telecommunications (earlier mark No 1) have the same purpose and are complementary. Furthermore, they are sold through the same distribution channels and are provided by the same undertakings. Therefore, they are similar.

The contested technical drawing; industrial design are services provided by architects, engineers or designers. They consist of providing precise and detailed drawings and designs of objects. These kinds of drawings and designs are often performed by using special kinds of computer software and, furthermore, the designs and drawings themselves are often part of the software under development. Therefore, the contested services and the opponent’s computer software (earlier mark No 1) are complementary. Furthermore, they may target the same end users and may be produced or provided by the same undertakings. Therefore, they are at least similar to a low degree.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical or similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

As regards the relevant goods and services as a whole, the public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased. In particular, the financial services target the general public, which is reasonably well informed and reasonably observant and circumspect. However, since such services are specialised services that may have important financial consequences for their users, consumers’ level of attention would be quite high when choosing them (03/02/2011, R 719/2010‑1, f@ir Credit (fig.) / FERCREDIT, § 15; 19/09/2012, T‑220/11, F@ir Credit, EU:T:2012:444, dismissed; 14/11/2013, C‑524/12 P, F@ir Credit, EU:C:2013:874, dismissed).

3. The signs

Earlier mark No 1

Earlier mark No 2	WYND
Earlier trade marks	Contested sign

The relevant territory is the European Union.

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

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The element ‘WIND’ in the earlier marks has several meanings in English. It is considered that a significant part of the English-speaking part of the public will perceive it as: ‘a current of air that is moving across the earth's surface’ (pronounced ‘wɪnd’) or in the sense that ‘when you wind something flexible around something else, you wrap it around it several times’ (pronounced ‘waɪnd’) (https://www.collinsdictionary.com/dictionary/english/wind on 28/08/2019). Neither of these connotations has any meaning in relation to the relevant goods and services. Therefore, this element is distinctive in those senses.

The letter ‘D’ in earlier mark No 1 will in its context not be perceived as having any clear meaning in relation to the goods and services in question. For this reason, it is distinctive. The dot between the verbal elements will be perceived as a separation sign such as a hyphen.

The wavy figurative device with the dot on top of it in the earlier marks is rather abstract and can be interpreted in different ways. As it has no clear concept in relation to the relevant goods and services, it is distinctive. The earlier marks’ typeface is rather normal and therefore weak.

Although the contested sign, ‘WYND’, means ‘a narrow lane or alley’ (Scottish) (pronounced ‘waɪnd’) (https://www.collinsdictionary.com/dictionary/english/wynd on 28/08/2019), it is considered that a significant part of the English-speaking part of the public will not attribute this meaning to the word, but merely perceive it as a fanciful way of spelling ‘WIND’ with the two meanings mentioned above, due to the aural identity that will influence the understanding of the term. It follows that this element is distinctive.

Taking the above into consideration, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the English-speaking part of the public that will perceive the earlier marks and the contested sign as (a fanciful spelling of) ‘WIND’ understood as a current of air (i.e. pronounced ‘wɪnd’), as this part of the English-speaking part of the public represents a substantial part of the public in the relevant territory.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). In this respect, the figurative elements of the earlier marks, as referred to above, being rather abstract, will not be attributed too much weight and as such they are rather secondary in the overall get-up.

Visually, the signs coincide in the letters ‘(**)W*ND’. They differ in their middle letters, ‘I’ in the earlier marks, and ‘Y’ in the contested sign, respectively, and in the figurative device with the dot on top of it reproduced in the earlier marks. Additionally, the signs differ in the initial letter, ‘D’, and the dot placed between this letter and the additional verbal element in earlier mark No 1.

Therefore, the signs are, at least, visually similar to an average degree.

Aurally, in respect of earlier mark No 2, the signs will be pronounced identically (‘wɪnd’) for the part of the public referred to above. In respect of earlier mark No 1, the signs are at least aurally similar to an average degree (‘di:-wɪnd’ v ‘wɪnd’).

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs. In respect of earlier mark No 2, both signs will be perceived as conveying (a fanciful spelling of) ‘WIND’ and to that extent, they are conceptually highly similar, if not identical, as the figurative device and stylisation do not introduce any particular concept capable of altering the conceptual perception of the signs.

In respect of earlier mark No 1, insofar as the presence of the ‘D’ (and the dot between the verbal elements) conveys a differentiating distinctive meaning, the signs are conceptually similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier marks

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent claims that the earlier trade marks have a high degree of inherent distinctiveness with regard to the goods and services for which the mark is registered, as they have no meanings in relation to them.

The Opposition Division notes that any higher degree of distinctiveness acquired by the earlier marks has to be proven by its proprietor by submitting appropriate evidence. A trade mark does not have a higher degree of distinctiveness, just because there is no conceptual link to the relevant goods and services (16/05/2013, C-379/12 P, H/Eich, EU:C:2013:317, § 71). Therefore, the opponent’s argument must be set aside.

However, the opponent invoked Article 8(5) EUTMR in relation to, inter alia, earlier mark No 2 and submitted evidence in support of reputation of this earlier mark, which is an implicit claim of enhanced distinctiveness. Nevertheless, as will be explained further below in this decision, the Opposition Division finds it appropriate to continue the assessment of the inherent distinctiveness of this earlier mark.

In the present case, the earlier trade marks have no meanings in relation to any of the goods and services in question from the perspective of the public in the territory referred to above. Therefore, the distinctiveness of the earlier marks must be seen as normal.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

As concluded above, the goods and services are identical, similar to varying degrees and dissimilar. The relevant public is the public at large and professionals, and the degree of attention paid when purchasing the goods and services varies between average and (quite) high. Visually, aurally and conceptually, the signs are at least similar to an average degree.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Therefore, it is very likely that consumers will either confuse the elements ‘WIND’ in both earlier marks and ‘WYND’ in the contested sign in respect of the relevant goods and services with the exception of those found dissimilar, or assume that the goods and services covered derive from the same undertaking or economically linked undertakings.

Moreover, it is, indeed, highly conceivable that consumers will perceive the contested sign as a sub-brand, a variation of the earlier marks, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

The applicant argues that the trade marks in question are not used in the same markets. It should be noted that the examination of likelihood of confusion carried out by the Office is a prospective examination. In contrast to trade mark infringement situations — where the courts deal with specific circumstances in which the particular facts and the specific nature of use of the trade mark are crucial — the deliberations of the Office on likelihood of confusion are carried out in a more abstract manner. Therefore, the particular circumstances in which the goods and services covered by the marks are actually marketed have, as a matter of principle, no impact on the assessment of the likelihood of confusion, because they may vary in time depending on the wishes of the proprietors of the trade marks (15/03/2007, C-171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C-354/11 P, G, EU:C:2012:167, § 73; 21/06/2012, T-276/09, Yakut, EU:T:2012:313, § 58) and, therefore, the comparison must be made between the signs as they were registered or as they appear in the application for registration (09/04/2014, T-623/11, Milanówek cream fudge, EU:T:2014:199, §38). That is to say, the present proceedings concern a formal comparison of the signs only. Therefore, the applicant’s argument is not relevant and must be set aside.

Considering all the above, the Opposition Division finds that the differences between the signs are not sufficient to safely exclude a likelihood of confusion, including for the services found to be similar to a low degree. This also applies to the part of the public paying a high degree of attention. For this reason, there is a likelihood of confusion on the part of the English-speaking part of the public referred to above. Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registrations No 14 284 525 (earlier mark No 1) and No 751 271 (earlier mark No 2). As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to varying degrees to those of the earlier trade marks.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these services cannot be successful, insofar as this ground is concerned. Even if earlier mark No 2 were to be considered as enjoying a high degree of distinctiveness, this would not make any difference with respect to the services found dissimilar above, given that dissimilarity between goods and services cannot be overcome by a highly distinctive earlier trade mark in respect of Article 8(1)(b) EUTMR. Consequently, it is not necessary to enter into this assessment.

The opponent has also based its opposition on part of the goods and services covered by earlier mark No 3 in relation to Article 8(1)(b) EUTMR, namely Italian trade mark registration No 1 272 674 for the trade mark ‘WIND MARCHIO VERBALE’ (i.e. WIND VERBAL MARK) for goods and services in Classes 9 and 38.

The goods covered in Class 9 are mainly apparatus and instruments for scientific or research purposes, audiovisual and information technology equipment, as well as safety and life-saving equipment, and the services covered in Class 38 are mainly services allowing at least one person to communicate with another by a sensory means. Such services include those that allow one person to talk to another, transmit messages from one person to another, and place a person in oral or visual communication with another (radio and television).

Reference is made to the remaining contested services in Class 35 that are considered to be dissimilar above.

Although these goods and services target or may target the same end users, they are of a different nature, have different purposes, follow different methods of use and are not complementary nor in competition. Furthermore, they are sold through different distribution channels and usually provided by different undertakings. Since the remaining contested services in Class 35 have no relevant points in common with the opponent’s goods and services invoked in relation to earlier mark No 3 under this ground, they are dissimilar. Consequently, even if this earlier mark had been taken into account above, the outcome would be no different as concerns the services in Class 35 already found dissimilar.

REPUTATION — ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to European Union trade mark registration No 751 271 for the figurative mark (earlier mark No 2, in the following referred to as the earlier mark), for which the opponent claimed reputation in the European Union.

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

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

• The signs must be either identical or similar.

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

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

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

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

1. Reputation of the earlier trade mark

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

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

In the present case, the contested trade mark was filed on 05/02/2018. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:

Class 9: Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus Telephones, cellular telephones, products and accessories in the telecommunications sector; pre-paid telephone cards for cellular telephones.

Class 37: Manufacture, repair, installation, maintenance and assistance services in the telecommunications sector.

Class 38: Telecommunications Services for automatic answering, call waiting, call holding, call forwarding, emergency call, taxi call and reception for short text messages.

The remaining dissimilar services against which the opposition is directed are the following:

Class 35: Book-keeping; systemization of information into computer databases; compilation of computer databases; computerized file management; collating of data in computer databases; management and compilation of computerised databases; compilation of information into computer databases; compilation and systematisation of information in databanks; collection and systematisation of information into computer databases; compilation and input of information into computer databases; updating and maintenance of data in computer databases; updating of business information on a computer data base; business administration; administration of business affairs; administration of foreign business affairs; administration of the business affairs of franchises; negotiation of commercial transactions for third parties.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 05/12/2018 and 07/12/2018, the opponent submitted the following evidence:

• Extracts from the opponent’s website regarding its history and values etc. The opponent company was established in 1997 and has been growing in terms of joining company groups and establishing joint ventures afterwards. In 2014, it won the prize for being the best mobile operator in Italy according to a Dutch institute. According to the opponent’s website, the opponent had a significant revenue in 2017, a substantial amount of customers and has been investing large amounts in infrastructure. Moreover, the figures as of 30 June 2018 indicate a solid business. Similar information can be seen from extracts of Wikipedia, including information regarding a main sponsorship for the football club A.S. Roma until 2013. Another extract from the opponent’s website states that the opponent is engaged in events, sponsorships and institutional initiatives.

• Reports from the opponent company group regarding consolidated financial statements for 2016, 2017 and 2018 as of 30 June.

• Extracts containing pictures of the earlier mark on the front part of A.S. Roma football jerseys. According to the opponent, it was the main sponsor of this football club from 2007 to 2013. In the pictures, the earlier mark is clearly present, and, according to the opponent, the games are played in Champions League, Europa League and the Italian Championship games against teams such as Manchester United, Real Madrid, Bayern München and Juventus. These statements can be confirmed by the content of the pictures.

• Extracts containing articles referring to the mark from various Italian newspapers (e.g. ‘la Republica’ and ‘Pubblicità Italia Today’) from 2012 to 2018 regarding, amongst others, awards that the opponent company has been given. For some of the articles, the amount of readers and the number of times that the articles have been circulated are indicated at the top of the extracts. These numbers are rather high (e.g. ‘Readers: 428.000’ and ‘Circulation 73.133’). In one of the articles, the award regarding business and development has been given to the CEO of the opponent company due to ‘a career dedicated to telecommunications’. In another article, it is stated that the opponent company has been awarded with a Dutch prize as the best mobile operator. In that article, it is mentioned that the opponent company is ‘at the top of quality for what concerns mobile phones services in Italy’. Similar statements and appraisals are repeated in several of the submitted articles such as ‘Wind has resulted to be the fastest companies in communications and reply to customers’ (‘Customers’ associations awards Wind’); ‘Wind […] was awarded the first place among the mobile phone operators for “the excellent services offered to its clients at its stores” […]’ (‘Public and private — Wind is awarded as the best telecommunications operator’); ‘The mobile phone operator has launched some new, more competitive roaming offers’ (‘Wind, new offers’); ‘All inclusive Wind Unlimited, offering calling minutes and text messages with other Wind customers and limitless Internet data is an offer for both Wind customers […]’ (‘Wind. The offer changes with the client’).

Moreover, some of the articles concern the opponent’s advertising. For instance, some of the articles contain the following quotes: ‘The new episode of Wind advertising campaign is on air from several days from now […]’ (‘Spot direction by Luca Miniero, Production of Fargo Film’); ‘Wind is now on air with a new television advertising campaign’ (‘Wind launches a new “space” offer with Giorgio Panariello’).

Furthermore, a number of articles contain information regarding various offers such as: ‘Big news for those Wind customers […]. They can choose among the best mobile phones with a special price […]’ (‘Wind. New offers to reward loyalty’) and ‘Wind launches new offers dedicated to mobile and landline phones’ (‘Wind, new offers for mobile and landline phones’).

• Several videos and a sound file (radio) in terms of commercials displaying the earlier mark, which, according to the opponent, have been broadcast on Italian television and on YouTube. As some of the videos are mentioned in the articles mentioned above, it is possible to determine that they have been sent between 2012 and 2018. Most of the videos contain information about prices in euros for varying offers regarding, inter alia, SMS, MMS, minuti (minutes), internet, various amounts of GB (gigabytes), mobile phones etc.

• An extract regarding a communication markets monitoring system dated 2017 containing various graphics and analyses regarding, inter alia, telecommunication.

• An affidavit by General Counsel of the opponent company Mark Alexander Shalaby, dated 04/12/2018. The history of the Italian company is briefly presented. The numbers mentioned, for instance, market share percentage and amount of customers, are rather significant (30,8% of the mobile operator market in 2018 and several millions of customers both in regard to the mobile market and the market for fixed lines). Moreover, it is stated that the opponent company has more than 20.000 km of fibre optic backbone. Furthermore, it is stated that the opponent’s trade marks have been continuously used for goods and services related to telecommunication since 1999. The General Counsel also mentions that the opponent provides its goods and services through flagship stores throughout Italy (689 in 2017) and that the opponent also sells its goods and provides its services through authorised dealers. In addition, it is stated that the opponent had a turnover in 2017 of EUR 6,182 million. The yearly sales of the opponent’s goods and services are also provided, which shows a rather steady turnover from 2008 to 2015 (around EUR 3,500, supposedly millions) and a significantly bigger amount in 2016 (EUR 5,222, supposedly millions). Moreover, it is stated that the opponent company has spent millions of euros to advertise and promote its trade marks via the most popular magazines, newspapers and media in Italy, and that famous people from Italy and Spain have been involved in some of the video advertisements. In this connection, the opponent states that this extensive advertising has resulted in a wide popularity of the opponent’s trade marks in Italy. Furthermore, it is stated that the WIND trade mark is recognised throughout Italy as originating from the opponent company in relation to telecommunication services and products of quality. With reference to the articles mentioned above, it is also stated that the opponent company has received many awards. In this connection, three awards regarding ‘Best Customer Satisfaction for Mobile Consumer’ (2010), best mobile operator in Italy, according to the Dutch Quality and Finance Institute (2014) and as the best telecommunications company in Italy in 2015 (an international prize, ‘Le Foni’, sponsored by the European Commission), respectively, are mentioned. Lastly, it is stated that the opponent promotes its products through promotional and social events, and, with reference to the pictures above, that the opponent has been the main sponsor for the football team A.S. Roma.

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.

The evidence clearly shows that the opponent’s mark has been extensively used between 2012 and 2018 and that it has been subject to massive exposure. This can, inter alia, be inferred from the sponsorship of the football team A.S. Roma and its participation in various big tournaments, in particular Champions League, as well as the rather large amount of press articles and video commercials. Indeed, sponsorship of a renowned team and its inclusion in one of the most important leagues in the EU means that the trade mark was exposed not just in the stadiums, but also in newspapers and on television when the event was televised and reported on. This sponsorship combined with the advertising in general and the press articles clearly demonstrate that the trade mark was not only heavily exposed but also that the trade mark was heavily talked about within the field of telecommunications. Indeed, as is evident from the listing, a number of accolades have been awarded to the trade mark and its telecommunications services are considered to be of a high quality. Not only was there a significant recognition but the mark also has a good reputation linked to quality in its field, at least in Italy.

The Court has clarified that for an earlier European Union trade mark reputation throughout the territory of a single Member State may suffice (06/10/2009, C-301/07, Pago, EU:C:2009:611). In the present case, the evidence mainly concerns Italy but also refers to a prize from a Dutch institute. The provided evidence regarding sponsorship, publicity in press articles and advertisements together with the sworn statements in the affidavit and the information in the additional submissions are, for this reason, sufficient for the Opposition Division to conclude that the earlier trade mark has a degree of reputation in Italy and, therefore, enjoys reputation in the European Union.

The evidence mainly relates to telecommunication services, which clearly include the opponent’s telecommunications services for automatic answering, call waiting, call holding, call forwarding, emergency call, taxi call and reception for short text messages. However, there is no or little reference to the remaining goods and services. This is evident, for example, from the content of the press articles and the advertisements, in which, essentially, publicity and various offers within telecommunication services appear. It is, therefore, obvious that the opponent has acquired a reputation within the abovementioned telecommunication services. In general, provision of telecommunication services calls for administering clients and keeping track of payments.

2. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

3. 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.

The opponent ‘considers that the coexistence of the signs under comparison in the trade will cause likelihood of association between their business origins’ and that ‘consumers will erroneously associate the contested EUTM application WYND to the Opponent, Wind TRE S.p.A.’.

The signs in question are at least similar to an average degree (visually), identical (aurally) and highly similar if not identical (conceptually). The earlier mark has an inherent normal distinctiveness and the strength of the earlier mark’s reputation must be considered to be of a certain degree within telecommunication services where the recognition also derives from the quality of its services provided, at least this is what can be ascertained from the evidence provided.

The remaining contested services are: book-keeping; systemization of information into computer databases; compilation of computer databases; computerized file management; collating of data in computer databases; management and compilation of computerised databases; compilation of information into computer databases; compilation and systematisation of information in databanks; collection and systematisation of information into computer databases; compilation and input of information into computer databases; updating and maintenance of data in computer databases; updating of business information on a computer data base; business administration; administration of business affairs; administration of foreign business affairs; administration of the business affairs of franchises; negotiation of commercial transactions for third parties. As previously described, these are administrative business processing services as well as services provided to organise and run a business and assist in the execution of business decisions or the performance of business operations.

These services may have been considered dissimilar in the examination under Article 8(1)(b) EUTMR, but within the assessment of a link, the relevant public may perceive a connection which could bring to make the earlier mark in relation to these contested services. Indeed, when considering the relevant public, the same public that purchases the reputed services protected by the earlier mark may also wish to purchase the contested services. Moreover, business services are clearly connected with telecommunications services with the latter assisting in making online tools available as business solutions, just as commercial assistance and administrative services are necessary to a certain extent in order to provide telecommunications services.

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, 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).

4. Risk of injury

Use of the contested sign 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, inter alia, claims that ‘there is unfair advantage taken of the repute of the Opponent’s trademarks’, as the ‘opposed sign may profit from the renown of the earlier trademark by unduly exploiting its prestige. Such a risk will be particularly high where the earlier mark has acquired not only a high degree of recognition among consumers, but also a “good” or “special” reputation, in the sense that it reflects an image of excellence, reliability or quality’. In other words, the opponent claims that use of the contested trade mark would take unfair advantage of the repute of the earlier trade mark.

Unfair advantage (free-riding)

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

The opponent bases its claim on the following statements:

 ‘The applicant will benefit from the attractiveness of the earlier marks by affixing on its goods a sign which is almost identical to trade marks widely known in the Italian market, thus misappropriating their attractive powers and advertising value.’

 The earlier trade marks ‘would be brought to the mind of the relevant consumer when viewing the contested sign.’

 That ‘there is unfair advantage taken of the repute of Opponent’s trademarks. The opposed sign may profit from the renown of the earlier trademark by unduly exploiting its prestige.’

 ‘The average consumers may indeed be led to associate the signs and to believe that the goods and services covered by the opposed EUTM application are a new product/services line with the same quality and the same origin of those covered by the earlier trademarks.’

When assessing unfair advantage, the applicant’s intention is not a material factor. Taking unfair advantage does not necessarily require a deliberate intention to exploit the goodwill attached to someone else’s trade mark. The concept of taking unfair advantage ‘concerns the risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation’ (19/06/2008, T‑93/06, Mineral Spa, EU:T:2008:215, § 40; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40; 30/01/2008, T‑128/06, Camelo, EU:T:2008:22, § 46).

To determine whether the use of a sign takes unfair advantage of the distinctive character or the repute of the mark, it is necessary to undertake an overall assessment that takes into account all the factors relevant to the circumstances of the case (10/05/2007, T‑47/06, Nasdaq, EU:T:2007:131, § 53, confirmed, on appeal, by 12/03/2009, C‑320/07 P, Nasdaq, EU:C:2009:146; see also 23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 30, 38; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 57, 58, 66; 24/03/2011, C‑552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 53).

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).

Therefore, for the purpose of the present evaluation, whether or not the contested sign takes unfair advantage of the earlier mark must be assessed by reference to the average European consumer of the contested services in Class 35 for which a link was found, namely book-keeping; systemization of information into computer databases; compilation of computer databases; computerized file management; collating of data in computer databases; management and compilation of computerised databases; compilation of information into computer databases; compilation and systematisation of information in databanks; collection and systematisation of information into computer databases; compilation and input of information into computer databases; updating and maintenance of data in computer databases; updating of business information on a computer data base; business administration; administration of business affairs; administration of foreign business affairs; administration of the business affairs of franchises; negotiation of commercial transactions for third parties.

These services target a professional public, whose degree of attention will vary from average to high depending on the price, specialised nature, or terms and conditions of the services purchased.

Taking into account all of the above, in particular the fact that the earlier mark has a certain degree of reputation, the fact that the signs are at least visually similar to an average degree, aurally identical and conceptually highly similar if not identical and the fact that there are some commonalities between the opponent’s services and the abovementioned contested services, it must be held that there is a high probability that the use of the contested sign may lead to free-riding, that is to say, that it would take unfair advantage of the well-established reputation of the earlier mark and the considerable advertisement investments undertaken by the opponent to achieve that reputation.

Therefore, the relevant public of the abovementioned services in Class 35 might think that the contested sign, ‘WYND’, is a new mark from the opponent offering commercial assistance and administrative services related to telecommunications services.

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

Other types of injury

The opponent also argues that use of the contested trade mark would take unfair advantage of the distinctive character of the earlier trade mark and would be detrimental to the distinctive character or repute of the earlier trade mark and to its owner in general.

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 repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.

5. Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must also be rejected for all the remaining services in Class 35.

It follows that the contested trade mark must be rejected for all the contested goods and services.

Given that the opposition is entirely successful under Article 8(1)(b) and Article 8(5) EUTMR in relation to earlier mark 1 and 2, it is not necessary to examine the remaining earlier right on which the opposition also is based, namely Italian trade mark registration No 1 272 674 (earlier mark No 3).

COSTS

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

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

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

The Opposition Division

Vanessa PAGE

Mads Bjørn Georg JENSEN

Cristina SENERIO LLOVET

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.