OPPOSITION No B 3 052 181

Google LLC, 1600 Amphitheatre Parkway, 94043, Mountain View, United States (opponent), represented by Grünecker Patent- und Rechtsanwälte Partg mbB, Leopoldstr. 4, 80802, München, Germany (professional representative)

a g a i n s t

Iodema S.r.l., Via Ciccarello 19, 89133 Reggio Calabria, Italy (applicant), represented by Bugnion S.p.A., Via di Corticella 87, 40128 Bologna, Italy (professional representative).

On 30/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 052 181 is upheld for all the contested goods.

2. European Union trade mark application No 17 784 811 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 784 811 for the word mark ‘ELECTRODROID’. The opposition is based on, inter alia, European Union trade mark registration No 8 458 309 for the word mark ‘ANDROID’.  The opponent invoked Articles 8(1)(b) and 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier European Union trade mark registration No 8 458 309, for which the opponent claimed repute (Article 8(5) EUTMR) 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.

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 07/02/2018. 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 for which the opponent has claimed reputation, namely:

Class 9: Mobile devices, namely cell phones, mobile phones, smart phones and handheld personal digital assistants (PDAs), and peripherals for same; computer software for use in connection with mobile devices, namely cell phones, mobile phones, smart phones and handheld personal digital assistants (PDAs).

The opposition is directed against the following goods:

Class 9: Software; mobile apps; computer software applications, downloadable; software and applications for mobile devices; training software; computer gaming software; electrical engineering software; software related to handheld digital electronic devices; data processing programs; programs for computers; education software; software for smartphones; electronic publications, downloadable; games software; electronic calculators; measuring transducers; training manuals in the form of a computer program; decorative magnets; electronic dictionaries; computer application software for use with wearable computer devices; virtual classroom software; instruction manuals in electronic format; computers and computer hardware.

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 03/12/2018 the opponent submitted evidence to support this claim. As the opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists, in particular, of the following documents:

 An Affidavit, signed by the senior trade mark counsel of Google Inc., dated 27/11/2018, setting out the history of ‘ANDROID’, the ‘ANDROID’ trade marks, the success in terms of sales of this software, its popularity with the public, the value associated with the mark, the prizes awarded to ‘ANDROID’ and the major marketing activities carried out with regard to the aforesaid goods. In the Affidavit is, i.e. stated that the trade mark ‘ANDROID is used extensively and with great success for an operating system for mobile devices such as smartphones and tablet computers, among other things. The ‘ANDROID’ mark was adopted by Andy Rubin as the name for his mobile phone venture, Android Inc. and the first press mention of this venture on 11/04/2005 in the Newsweek. Google acquired Android Inc. in August 2005 and that acquisition received immediate press attention in BusinessWeek and other publications. In 2007, together with a number of other prominent technology and wireless companies, Google, Inc. announced the development of the ‘ANDROID’ open source platform for mobile devices, called Open Handset Alliance (OHA) and was made available for development and use by third parties in November 2007. The first ‘ANDROID’ powered device was sold in October 2008. Currently, approximately 85 companies are part of the Alliance, and ‘ANDROID’ devices are offered by more than 329 mobile carriers in over 190 countries. The devices are manufactured via a global partnership network of over 60 original equipment manufacturers. The members are involved with the ‘ANDROID’ platform in a variety of ways, including manufacturing mobile devices powered by the ‘ANDROID’ platform, providing telecommunication services and developing software compatible with the ‘ANDROID’ platform. Currently, there are 24.000 Android devices from over 1.300 brands available and there are more than 2 billion active Android devices around the world. Additional software applications or ‘apps’, developed internally by Google Inc. or by third parties, are available to users in 190 countries through the online store operated by Google, Google Play. There are currently 1 million ‘ANDROID’ apps available on Google Play (Q3 2018). Between May 2017 and May 2018, more than 94 billion Android apps were downloaded from Google Play and there are 8 billion new installs per month globally. The ‘ANDROID’ platform are heavily promoted by original equipment manufacturers and mobile carriers throughout Europe. In addition, Google LLC has devoted considerable resources over the past years to marketing the ‘ANDROID’ platform in Europe. Marketing efforts include full website takeovers for popular publications like The Guardian and Telegraph in the UK, extensive digital and online marketing efforts throughout the UK, France and Germany, and takeovers of prominent objects and locations in the UK. As of June 2012, consumers have installed more than 25 billion ‘ANDROID’ apps, and over 50 billion app installs were made between May 2014 and May 2015. In the fiscal year beginning 2014, the opponent paid more than USD 7 billion to app developers in connection with the distribution of their apps. More than 1.5 million Android devices are activated each day, and more than 900 million Android devices have been activated to date. As of July 2013, Google Inc. had over 200 registrations worldwide (including the EU) for the ‘ANDROID’ mark. The ‘ANDROID’ platform has grown quickly over the last years, and in Q4 of 2010, it became the smartphone platform with the highest volume of global shipments. It became the most popular platform in the US, reaching a market share of more than 70% in Q4 2012. The international shipments of ‘ANDROID’ units went from 85 million in Q4 2011 to more than 155 million in Q4 2012, and to more than 305 million in Q1 2013. In 2014, worldwide shipments of smartphones packaging the ‘ANDROID’ platform exceeded 1 billion units, which gave the ‘ANDROID’ mobile operating system of Google Inc. a worldwide market share of more than 80% that year. The opponent also makes a number of online resources available to app developers, such as ‘ANDROID’ Developers Blog and the official ‘ANDROID’ Developers YouTube channel, which enjoys over 250,000 subscribers with more than a 150 million video views. The opponent’s promotional video, ‘ANDROID Demo’ has been viewed over 8 million times. As of September 2015, the opponent owned over 500 registrations worldwide for the ‘ANDROID’ mark or marks containing the term ‘ANDROID’, with more than 250 applications pending in many countries and languages.

As can be taken from the Affidavit, mobile devices running the ‘ANDROID’ platform are heavily promoted by original equipment manufacturers and mobile carriers throughout Europe. In addition, the opponent has devoted considerable resources over the past year to marketing the ‘ANDROID’ platform in Europe. Marketing efforts include full website ‘takeovers’ for popular publications like The Guardian and Telegraph in the UK, extensive digital and online marketing efforts throughout the UK, France, and Germany, and ‘takeovers’ of prominent objects and locations in the UK (including double-decker bus wrappers, Liverpool Station, Canary Wharf, Kings Cross Station, and others). As well as there appear pictures displaying examples of the above mentioned promotions for the ‘ANDROID’ platform on prominent objects and locations in the UK, which are attached to Exhibit 1), the Affidavit. Furthermore, from this exhibit can be seen that as of November 2018 Google owned over 700 registrations worldwide for the ‘ANDROID’ mark or various ‘ANDROID’ formatives with more than another 100 applications pending in many countries and languages.

 Pictures displaying examples of the opponent’s marketing efforts that include full website ‘takeovers’ for popular publications like ‘The Guardian’ and ‘Telegraph’ in the United Kingdom, extensive digital and online marketing efforts throughout the UK, France and Germany, and ‘takeovers’ of prominent objects and locations in the UK (including double-decker bus wrappers, Liverpool Station, Canary Wharf, Kings Cross Station, etc.) for the ‘ANDROID’ platform.

 A print out of the OHA (Open Handset Alliance) announcement of 05/11/2007 regarding the development of the ‘ANDROID’ open source platform, as well as a list of members of the Open Handset Alliance (OHA) and stating that approximately 85 companies are part of the Alliance, that ‘ANDROID’ devices are offered by more than 300 mobile carriers in over 160 countries (including the EU), that the devices are manufactured via a global partnership network of over 60 original equipment manufacturers and that, as of June 2014, there were more than one billion active ‘ANDROID’ device users around the world with more than one million new ‘ANDROID’ devices activated every day.

 A print out of the article for ‘ANDROID’ from the online encyclopaedia ‘Wikipedia’, dated 27/11/2018, titled ‘Android (operating system)’. It gives information regarding the history of Google Inc. in which is stated that Google acquired another company and took control of the majority share of the ‘Android’ telephone market and will have its own mobile telephone factories.

 An article from ‘The Verge’, dated 26/09/2018 on the 10^th anniversary of the ‘ANDROID’ operating system software for smart phones, containing citations from the opponent’s former CEO Eric Schmidt, with the title: ‘The world’s most dominant technology – It’s an Android world; we just live in it.

 Statistics downloaded from the online statistics platform ‘statista.de’. The first chart below shows the rise of the ‘ANDROID’ smartphone operating system’s global market share in numbers of sales to end consumers from the 1^st quarter of 2009 to the 2^nd quarter of 2018, reaching over 85% in June 2018. A chart shows the corresponding total number of sales to end consumers reaching well over 300 million units between the 3^rd quarter of 2016 and the 2^nd quarter of 2018.

 A printout of an article from CNET Magazine, dated 02/11/2016 and an article of the online magazine QUARTZ, dated 03/11/2016, both announcing that the ‘ANDROID’ software ran on 88% of all phones shipped worldwide between 01/07/2016 and the end of September 2016.

 A printout of an interview article from The Verge with Sunday Pichai, the opponent’s CEO, dated 29/05/2015 containing the story behind the shipment of 1 billion Android phones in 2014.

 A print out of an article from ‘CNET Magazine’ of 29/01/2015, titled ‘Android shipments in 2014 exceed 1 billion for first time, That gave Google’s mobile operating system 81 percent of the worldwide market in 2014, compared with 15 percent for Apple’s iOS’. In this article is mentioned that worldwide shipments of smartphones packing ‘ANDROID’ exceeded 1 billion units in 2014, a significant gain from the 780.8 million units that were shipped around the world in 2013.

 A print out of an article from ‘InformationWeek’ of 28/02/2012, titled ‘Android’s Success: By The Numbers’. In this article is stated that Google’s Android boss bragged about the platform’s incredible success of 300 million devices with 850,000 new devices activated daily which is up significantly from a few weeks ago when the company said it was activating about 750,000 devices per day. Worldwide, there are now more than 300 million Android devices. Those 300 million Android device owners are downloading applications at a rate of more than one billion per month.

 Articles from CNN Money, dated 08/02/2011 and Fortune.com, dated 16/06/2011 reporting on the popularity of ‘ANDROID’ in connection with smartphones but also in connection with advertising services.

 A document showing that the opponent makes a number of online resources available to app developers, such as the ‘ANDROID’ Developers Blog (http://www.android-developers.blogspot.com) and the official ‘ANDROID’ Developers YouTube channel (http:www.youtube.com/user/androiddevelopers) which has over 680.000 subscribers with more than 120 million video views. The opponent’s promotional video, ‘ANDROID Demo’ (http:www.youtube.com/watch) has been viewed over 8.5 million times.

 Some printouts of the website accessible at https://developer.android.com, giving further information on the use and success of the opposition marks and some screenshots of the opponent’s ‘YouTube’ channel and a promotional video.

 A print out showing in a ranking of the ‘Top 50 brands’ by the platform rankingthebrands.com, that the ‘ANDROID’ trade mark was voted number 4 in Germany in 2017 behind Apple, Amazon and the opponent’s core mark ‘Google’ and number 5 in the US in 2018 behind Apple, Amazon, Pinterest and Netflix.

The opponent also refers to several previous decisions, namely opposition No B 2 493 289, ‘ANDROID’/’DRAGDroid’, dated 20/06/2016; No B 2 488 933 ‘ANDROID’/’PlayDroid’, dated 20/06/2016; No B 2 153 719, ‘ANDROID’/’i’mdroid’, dated 21/04/2016; No B 2 440 678, ‘ANDROID’/’PRODROID’, dated 30/09/2015; No 2 418 187, ‘ANDROID’/’USBDROID’, dated 02/09/2015; No B 2 418 112, ‘ANDROID’/’AUTODROID’, dated 01/09/2015; No B 2 054 909, ‘ANDROID’/’pandroid’ (FIGURATIVE), dated 30/09/2013; No B 1 957 052, ‘ANDROID’/’ANDROID/, dated 26/11/2012 and one decision from the French Patent and Trademark Office of 13/05/2015, ‘ANDROID’/’CARDROID(FIGURATIVE)’; all confirming the reputation of the ‘ANDROID’ mark and rejecting the opposed mark.

In its observations of 03/12/2018, the opponent states that the ‘ANDROID’ trade marks, owned by Google Inc., enjoy a high reputation and a high level of distinctiveness due to their long-standing and intensive use in the European Union and throughout the world. The opponent acquired Android Inc. in August 2005 and that acquisition received immediate press attention. By December 2018, 1 million ANDROID apps were available on Google Play. Between May 2017 and May 2018, more than 94 billion Android apps were downloaded for Google Play, and there were 8 billion new installs per month globally. As of December 2018, there were 24,000 Android devices from over 1,300 brands available and there were more than 2 billion active Android devices around the world.

The evidence relates to the relevant period and shows very clearly that the earlier trade mark has been subject to long-standing and intensive use and enjoys general renown in the relevant market in which it occupies a consolidated position among the leading trade marks worldwide, even reaching a fourth position from 2011, as has been proven by independent sources of various kinds. The opponent has provided cogent and incontrovertible evidence of this for some of the goods on which the opposition is based, namely computer software for use in connection with mobile devices, namely cell phones, mobile phones, smart phones and handheld personal digital assistants (PDAs) in Class 9. The growing number of devices that operate using the ‘ANDROID’ operating system and the downloads of the operating system itself and its updates, as well as the significant volume of apps created by third-party developers of the ‘ANDROID’ platform and their corresponding downloads from ‘ANDROID MARKET’, the online apps store, also show without any doubts towards the reputed character of the earlier mark. The different references to the earlier trade mark in the press and articles about the successes achieved, indicate beyond any doubt that the trade mark enjoys a high level of recognition among the relevant public who rank it among the most famous trade marks worldwide and obviously at the level of the European Union.

b) The signs

ANDROID	ELECTRODROID
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).

The earlier mark is a word mark consisting of the word ‘ANDROID’. The contested sign is a word mark consisting of the word ‘ELECTRODROID’.

The word ‘ANDROID’ of the earlier mark will be understood by part of the public, such as the English-, German-, Polish-, Romanian-, Spanish-, Italian-, Portuguese-, Danish-, French-, Dutch- and Finnish-speaking public, as ‘(in science fiction) a robot resembling a human being’ (see, for example, Collins English Dictionary online). This is because the equivalent word in these languages is ‘android’ (English, German, Polish and Romanian) or it is similar to this word, namely ‘androide’ in Spanish, Italian, Portuguese, Danish, French and Dutch and ‘androidi’ in Finnish. Despite its evocative meaning to robots, this element is distinctive as it has no direct and indirect meaning as regards the relevant goods. For another part of the public, the earlier mark is meaningless and is, therefore, distinctive.

The contested sign as a whole has no meaning. However, the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

Therefore, it is reasonable to assume that, for a part of the public, the contested sign will be split into two elements, ‘ELECTRO’ and ‘DROID’. The element ‘ELECTRO’ refers to ’electric or electrically’ (information extracted from Collins English Dictionary on 23/10/2019, at https://www.collinsdictionary.com/dictionary/english/electro). This word is internationally very widespread and it belongs to the basic vocabulary in all the relevant languages. Bearing in mind the relevant goods, it is considered that this element is at most weak, since the public would associate it with the nature and function of the goods, namely that these are electric apparatus and instruments and/or that they function in an electric way. The element ‘DROID’ could be perceived by a part of the public, such as the English-, Dutch-, Czech-, Polish-, Spanish-, Italian- and Portuguese-speaking public, as including the ‘droid’ or ‘droide’ component, depending on the language. The element ‘DROID’ is related to a type of robot that shows some form of intelligence and/or with the diminutive of the word ‘androide’ or ‘android’, namely, a humanised robot. In addition, even if the element ‘DROID’ is not understood immediately, it is so similar to the word ‘ANDROID’, and even in English it is the diminutive for ‘ANDROID’, that the relevant public will associate it with the concept for ‘ANDROID’. As explained above for the element ‘ANDROID’ of the earlier mark, this element is distinctive as it has no direct or indirect meaning as regards the relevant goods. For the part of the public for which this element has no meaning, it is distinctive.

Visually, the marks are similar to the extent that they coincide in their respective last five letters ‘-D-R-O-I-D’. On the other hand, they differ in the first and second letters ‘A-N-‘ of the earlier mark versus the first four letters ‘ELECTRO’ of the contested sign. The element ‘ELECTRO’ is, at most, a weak element for the public. Therefore, for all the aforementioned reasons and also taking into account the issue of distinctiveness, the signs are visually similar to at least an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the marks coincides in the sound of the letters ‘DROID’, present identically in both signs. The marks differ in that the earlier mark contains the sound of the first syllable ‘AN’ versus the sound of the first element ‘ELECTRO’ of the contested sign. Therefore, for all the aforementioned reasons and also taking into account the issue of distinctiveness, the signs are aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public for which the signs will be associated with a similar meaning insofar as they all refer to the concept of ‘ANDROID’, the signs are conceptually similar to at least an average degree. For the part of the public that do not grasp this meaning, the signs are not conceptually similar. The contested sign has an additional meaning that is not shared by the earlier mark, but this meaning has a limited impact, since it is, at most, weak.

As the signs have been found similar in at least one aspect of the comparison, the 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.

The types of injury referred to in Article 8(5) CTMR 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 (judgment of 23/10/2003, C-408/01, ‘Adidas-Salomon and Adidas Benelux’, paragraphs 27, 29 and 31; and judgment of 27/11/2008, C-252/07, ‘Intel Corporation’, paragraphs 57, 58 and 66).

It is now apparent that the earlier mark has a reputation in the European Union in relation to the following goods:

Class 9: Computer software for use in connection with mobile devices, namely cell phones, mobile phones, smart phones and handheld personal digital assistants (PDAs).

In the present case, the signs are found to be similar insofar as they share the letters ‘DROID’. Furthermore, by a part of the public, the earlier mark ‘ANDROID’ and part of the contested sign, namely ‘DROID’ refer to the same or a similar concept. In addition, for the public the element ‘ELECTRO’ of the contested sign is, at most, weak and, therefore, has less impact on the overall impression.

The Opposition Division finds that, despite the difference, in particular in the element ‘ELECTRO’ in the contested sign, the relevant consumers in the European Union will make an association between the signs owing to the coincidence of the letters ‘DROID’, which are fully contained in the contested sign, creating also an association with the same concept. This conclusion is heavily influenced by (i) the earlier marks’ reputation, (ii) the proximity between the contested and the opponent’s goods, as shown below.

In the view of the Opposition Division, given the coincidences of the marks and the fact that almost the whole earlier mark, with the exception of only two letters, is reproduced in the contested sign, and taking into account also the concepts conveyed, the weak distinctiveness of the element ‘ELECTRO’ for the public in the contested sign, the high level of recognition of the earlier mark and the proximity of the relevant economic sectors (explained in detail below), the public will establish a link between the signs in relation to the contested goods.

The Court has held in the judgement of 27/11/2008, C-52/07, ‘Intel Corporation’, mentioned above that the sections of the public relevant for each of the goods and services covered by the trade marks in dispute are a factor to be taken into account when considering whether or not the existence of a link can be justified. Therefore, before examining the opponent’s claim, the Opposition Division finds it useful to note that the opposition is directed against the following goods:

Class 9: Software; mobile apps; computer software applications, downloadable; software and applications for mobile devices; training software; computer gaming software; electrical engineering software; software related to handheld digital electronic devices; data processing programs; programs for computers; education software; software for smartphones; electronic publications, downloadable; games software; electronic calculators; measuring transducers; training manuals in the form of a computer program; decorative magnets; electronic dictionaries; computer application software for use with wearable computer devices; virtual classroom software; instruction manuals in electronic format; computers and computer hardware.

The contested software; mobile apps; computer software applications, downloadable; software and applications for mobile devices; training software; computer gaming software; electrical engineering software; software related to handheld digital electronic devices; data processing programs; programs for computers; education software; software for smartphones; games software; training manuals in the form of a computer program; computer application software for use with wearable computer devices; virtual classroom software are all different kinds of software or IT programs. They include or overlap with the opponent’s computer software for use in connection with mobile devices, namely cell phones, mobile phones, smart phones and handheld personal digital assistants (PDAs). The contested electronic publications, downloadable; electronic calculators; measuring transducers; electronic dictionaries; instruction manuals in electronic format; computers and computer hardware, are related to the IT-field and overlap in consumers with the opponent’s goods. These goods can be considered as being complementary to each other in the sense that, for example computers need software to operate. Regarding the contested decorative magnets this goods are normally used for promotional purposes and therefore, the public will associate them with the earlier mark, also because of its very high reputation.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that, when encountering the contested mark, the relevant consumers will be likely to associate it with the earlier sign, 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.

In the present case, the opponent claims the following:

Due to the similarity between the opponent’s and the contested sign, the applicant tries to take advantage of the high repute and distinctiveness with the opposition marks have achieved through the investment and efforts taken by the opponent. Moreover, the applicant tries to ride on the coattail of the opposition marks and benefit from their power of attraction in order to easily attract consumers without having to take any efforts of his own and saves the need to take the effort of own advertising for the goods offered by him and the respective costs. Furthermore, the applicant creates the impression of being commercially linked to the opponent, and consumers are likely to believe that the contested goods refer to the opponent, especially since the applicant is a software developer, among others distributing an app under the name ELECTRODROID which is compatible with the opponent’s ANDROID operating system. Therefore, the applicant’s main focus appears to be on ANDROID based software development. It is obvious that the name ELECTRODROID has been chosen by the applicant to make consumers think of the opposing marks when being confronted with goods branded with the contested sign next to goods (and services) branded or associated with the opponent’s marks. Consumers will believe that the respective goods marketed under the applicant’s sign either originate from the opponent directly or are at least licensed by the opponent, which is exactly what the applicant intended when filing the contested sign.

Moreover, the opponent argues that the use of the contested sign will cause a dilution of the distinctiveness and the repute of the opponent’s mark. It is likely that the capacity of the opponent’s mark to arouse immediate association with the opponent will be diminished through the use of the contested sign. This will lead to a weakening of the identity of the opponent’s marks and its hold on the public’s mind.

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 and be detrimental to the distinctive character and repute of the earlier trade mark.

Unfair advantage (free-riding)

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

As claimed by the opponent, the use of the contested mark ‘ELECTRODROID’ by the applicant will take unfair advantage of the opponent’s investment in the ‘ANDROID’ trade mark and the opponent’s reputation in the earlier mark. The opponent has invested money in developing and building the reputation of its earlier mark so that it is known by a large portion of the public in the European Union, and the applicant would benefit from this reputation without expenditure.

In the view of the Opposition Division, the present case has features which identify it as a classic instance of one trade mark taking unfair advantage of the reputation of another. In the first place, the earlier mark is extremely well-known in a particular field, in this case, it is a leading brand in the field of computer software and mobile phone technology. Secondly, the earlier mark is quirky and distinctive. Thirdly, the contested sign is similar to the reputed earlier mark; although the contested sign contains the additional letters ‘ELECTRO’, being even an, at most, weak element, these are not enough either to avoid a link; the contested sign imitates the exact combination of the letters ‘DROID’.

The notion of taking unfair advantage of distinctiveness covers cases where the applicant benefits from the attractiveness of the earlier right by affixing on its goods or services a sign which is widely known in the market, thus misappropriating its attractive powers and advertising value. This may lead to unacceptable situations of commercial parasitism, whereby the applicant is allowed to take a ‘free ride’ on the opponent’s investment in promoting and building up goodwill for its mark, which may stimulate the sales of the applicant's goods and services to an extent which is disproportionately high in comparison with the size of its promotional investment.

As regards taking unfair advantage of distinctiveness, it is noted that misappropriation of the distinctiveness of the earlier mark presupposes an association between the marks which renders possible the transfer of attractiveness to the applicant's sign. An association of this kind will be more likely in circumstances where the earlier mark possesses a very strong distinctive character, where there is a special connection between the goods and services which allows for some of the qualities of the opponent's goods to be attributed to those of the applicant or where, in view of its special attractiveness, the earlier mark may be exploited even outside its natural market sector.

The more immediately and strongly the earlier mark is brought to mind by the later sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to it (27/11/2008, C-252/07, ‘Intel’, EU:C:2008:655, § 67 -69; 18/06/2009, C-487/07, ‘L’Oréal’, EU:C:2009:378, § 41 and 43).

Therefore, the evaluation of detriment or unfair advantage must be based on an overall assessment of all the factors relevant to the case (including, in particular, the similarity of the signs, the reputation of the earlier mark, and the respective consumer groups and market sectors), with a view to determining whether or not the marks may be associated in a way which may prove injurious to the earlier trade mark, or which may allow the trade mark applied for to profit unduly from it.

The earlier mark is associated with an image of technical innovation and quality. The image reflects the prestige acquired by the ‘ANDROID’ trade marks and fulfils one of the functions of the trade mark, the advertising function, which consists of associating certain qualities with a mark.

Given that there is a connection between the goods in question, which has been thoroughly explained above in section c), it seems inevitable that the image of the earlier mark and the characteristics that it projects will be transferred to the applicant’s goods if they were marketed under the contested sign. In this way, the contested sign would receive an unfair ‘boost’ as a result of it being linked with the opponent’s ‘ANDROID’ mark in the minds of consumers in the European territory. This could lead to an unacceptable situation in which the applicant takes a ‘free ride’ on the opponent’s investment in promoting and building up goodwill for its marks, as it might stimulate the success of the applicant’s goods to an extent which was disproportionately high in comparison with the size of its promotional investment.

On the basis of the above, the Opposition Division concludes that the contested trade mark will take unfair advantage of the distinctive character or the repute of the earlier trade mark.

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.

Given that the opposition is entirely successful under Article 8(5) EUTMR, it is not necessary to examine the remaining ground, Article 8(1)(b) EUTMR, and earlier rights on which the opposition was based.

COSTS

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

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

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Saida CRABBE

Victoria DAFAUCE MENENDEZ

Carlos MATEO PÉREZ

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.