OPPOSITION No B 3 056 661

Heinrich Bauer Verlag KG, Burchardstraße 11, 20095 Hamburg, Germany (opponent), represented by Claudia-Dorothee Philipp, Burchardstraße 11, 20077 Hamburg, Germany (employee representative)

a g a i n s t

Union de Criadores de Toros de Lidia, Eduardo Dato, 7, 28010 Madrid, Spain (applicant), represented by Juan Botella Reyna, Velázquez, 80 - 4º Izda., 28001 Madrid, Spain (professional representative).

On 15/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 056 661 is upheld for all the contested services.

2. European Union trade mark application No 17 837 311 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 320.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 837 311 for the word mark ‘TORO BRAVO’. The opposition is based on, inter alia, German trade mark registration No 30 2016 021 012 for the word mark ‘BRAVO’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

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 German trade mark registration No 30 2016 021 012 for Classes 35 and 41.

a) The services

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

Class 35: Advertising research, namely sales, market and opinion research; distribution of goods for advertising purposes, in particular leaflets, brochures, printed matter and product samples; arranging advertising contracts for others; advertising, in particular broadcasting, television, cinema, print, teletext and teletext; public relations [public relations]; marketing; development of marketing concepts; rental of advertising material; rental of advertising films; rental of advertising space, also in electronic form on the internet; managing directors; business administration; office work; systematization and compilation of data in computer databases; updating of data in computer databases; administrative processing of orders for goods and services [also for teleshopping offers], in particular order acceptance, order processing, forwarding of orders, processing of complaints and requests for quotations and placing of orders; providing information [information] and advice to consumers in trade and business matters [consumer advice]; publication and publication of printed matter for advertising purposes.

Class 41: Entertainment, in particular radio and television entertainment as well as entertainment via the internet; entertainment by means of digital data provided by data networks, in particular by means of digital downloading, digital streaming, video-on-demand; conducting games on the internet; advice and informationon entertainment, including on the internet; film production, except advertising film production, television film production, video film production; production of radio, television and radio broadcasts, including for the provision of a digital platform; creation of texts [except for advertising], in particular video and teletext programs; film rental [film rental]; publication and publication of printed products [except for advertising], in particular magazines, newspapers, books, including in electronic form; publishing and reporting; education; education; sporting and cultural activities.

The contested services are the following:

Class 35: Sale of key rings, magnets, clothing, handbags, headgear, stationery and jewellery.

Class 41: Events, conferences relating to the world of bullfighting, education, entertainment, production of films, documentaries.

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

The term ‘in particular’, used in the opponent’s list of services, indicates that the specific 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).

However, the term ‘namely’, used in the opponent’s list of services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

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 services in Class 35

The word ‘sale’ is defined to mean ‘the action of selling something’ (information extracted from Lexico Dictionary on 01/10/2018 at https://www.lexico.com/definition/sale). Accordingly, the Opposition Division interprets the contested wording to be synonymous with retail and wholesale services.

The opponent’s services in Class 35 essentially concern advertising, commercial trading and consumer information, business assistance, management and administrative services which are services aimed at supporting or helping other businesses to do or improve their business. These services share no relevant factors with the contested retail and wholesale services which are aimed at allowing consumers to satisfy different shopping needs in one place. Furthermore, the contested services only have the following goods: key rings, magnets, clothing, handbags, headgear, stationery and jewellery as subject. Their nature, purpose and methods of use are different, they are not complementary to each other or in competition. Furthermore, they do not share the same distribution channels and are not usually provided by the same undertakings. The fact that, for example, some goods or services may appear in advertisements is insufficient for finding similarity. There is even less proximity between the contested services and the remaining services of the opponent in Class 41. The services in comparison differ in their nature, purposes, methods of use, distribution channels, providers and relevant public. They are neither in competition nor complementary. Consequently, it is concluded that the contested services are dissimilar to all the opponent’s services in Classes 35 and 41.

Contested services in Class 41

The contested events, conferences relating to the world of bullfighting are included in the broad category of the opponent’s cultural activities. Therefore, they are identical.

Education, entertainment are identically contained in both lists of services (including synonyms).

The contested production of films include, as a broader category, the opponent’s film production, except advertising film production, television film production, videofilm production. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested documentaries are included in the broad categories of, or overlap with, the opponent’s film production, except advertising film production, television film production. Therefore, they are identical.

b) 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 services found to be identical are directed at the public at large as well as at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to higher than average, depending on the price, the frequency of purchase and the specialisation of the relevant services.

c) The signs

BRAVO	TORO BRAVO
Earlier trade mark	Contested sign

The relevant territory is Germany.

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).

Contrary to the applicant’s opinion, the Opposition Division considers that the word ‘BRAVO’ has not a lower degree of distinctiveness in relation to the relevant services, as it does not describe any of the characteristics of the services at issue. It is frequently used to express approval in a performance but, in fact, there is no direct link between this word and the related services, as the term ‘BRAVO’ does not enable the public concerned to discern immediately and without further reflection the description of any of their characteristics. The link that, in the applicant’s opinion, can be found between the term ‘BRAVO’ and those services is too vague, as it involves several mental steps for consumers to make a connection between the word ‘BRAVO’ and the services included in the broad category of education; cultural activities and entertainment. For these reasons, the term ‘BRAVO’ is normally distinctive.

The element ‘TORO’ and ‘TORO BRAVO’ as a whole, in the contested sign, might be perceived by part of the relevant public as bull and bull fighting respectively, despite the fact that they are Spanish terms. The consumer may associate these elements with most of the contested services in Class 41. Therefore, for this part of the relevant public they have a limited distinctive character. However, for another part of the relevant public the element ‘TORO’ and ‘TORO BRAVO’ as a whole have no meaning and are, therefore, distinctive. The Opposition Division will focus the comparison on this part of the relevant public that will only perceive the element ‘BRAVO’ as a sheer.

Visually and aurally, the signs coincide in the verbal element ‘BRAVO’. However, they differ in the additional equally distinctive element of the contested sign ‘TORO’. The coinciding verbal element, ‘BRAVO’, constitutes the entire earlier mark, and despite being the second verbal element of the contested sign, it retains an independent and distinctive role within it. Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs coincide in the concept conveyed by their common verbal element ‘BRAVO’. This coincidence generates a high degree of conceptual similarity between the marks, given that the contested sign’s additional verbal element ‘TORO’ is meaningless (for at least a part of the public as indicated above and on which the comparison is focussed).

As the signs have been found similar in all aspects of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

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

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The applicant asserted that the signs differ in their verbal, phonetic and conceptual aspects. However, the Opposition Division considers that the signs are visually and aurally similar to an average degree and conceptually highly similar. This is because the contested sign contains the earlier mark ‘BRAVO’ in its entirety, which will be immediately recognised by the relevant public and constitutes an independent element in the contested sign.

As a rule, when the earlier trade mark is wholly incorporated in the contested sign and performs an independent and distinctive role therein, this is an indication that the two signs are similar (13/06/2012, T‑519/10, SG Seikoh Giken, EU:T:2012:291, § 27; 24/01/2012, T‑260/08, Visual Map, EU:T:2012:23, § 32; 22/05/2012, T‑179/11, Seven Summits, EU:T:2012:254, § 26).

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 services covered are from the same or economically linked undertakings. Furthermore, it is common practice in the relevant market for providers of services to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new services, or to endow a trade mark with a new, fashionable image. In fact, the likelihood that the public might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign as a sub-brand or a word variation of the earlier mark or vice versa, configured in a different way according to the type of services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

The applicant pointed out that the word element of the opponent’s trade marks ‘being represented without the graphic representation that always comes in their magazine covers, has a low degree of distinctiveness’. In support of its argument the applicant referred to several trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘BRAVO’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the public that considers the contested mark as meaningless. Given that a likelihood of confusion for only part of the relevant German public is sufficient to reject the contested application, there is no need to analyse the remaining part of the public. Therefore the opposition is partly well founded on the basis of the opponent’s German trade mark registration No 30 2016 021 012.

It follows from the above that the contested trade mark must be rejected for the services found to be identical to those of the earlier trade mark.

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.

With regard to the remaining dissimilar contested services (i.e. sale of key rings, magnets, clothing, handbags, headgear, stationery and jewellery) the examination of the opposition will continue under the ground of Article 8(5) EUTMR also invoked by the opponent.

REPUTATION — ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier German trade mark registration No 30 2016 021 012 for the word mark ‘BRAVO’.

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 Germany.

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 20/02/2018.Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Germany 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 16: Printed matter, especially magazines.

As indicated above in relation to ‘in particular’, the term ‘especially’, used in the opponent’s list of products, indicates that the specific 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.

The opposition is directed against the following services:

Class 35: Sale of key rings, magnets, clothing, handbags, headgear, stationery and jewellery.

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

On 25/01/2019 the opponent submitted, in particular, the following evidence:

 Enclosure 1: copy of a BRAVO magazine published in January 2019:

.

 Enclosure 2: screenshots of a press article celebrating BRAVO magazine’s 55th anniversary and discussing the 55 years of success stories relating to the cult magazine. The BRAVO now has its own exhibition in the State Museum ‘as a guide to the history of the impact of the legendary youth magazine BRAVO on youth cultural trends of the past decades’. Extracts from a book about the history of BRAVO (1956 – 2006), for the magazine’s 50th anniversary. by the Berlin Archiv der Jugendkulturen E.V. (Youth Culture Archive). Printouts from Wikipedia about the history of ‘BRAVO’ and the ‘BRAVO’ family of magazines (e.g. BRAVO Girl and Bravo Sport) according to which ‘BRAVO is the largest teen magazine within the German-language sphere’… ‘The first issue was published in 1956’…‘By 1996 each issue still sold around 1.4 million issues’.

 Enclosure 3: printout from Wikipedia regarding ‘The Bravo-Beatles-Blitz-Tournee’ in Germany, in 1966 and the ‘Rolling Stones Tournee’ organized by BRAVO Magazine in 1965.

 Enclosure 4: publication figures offered by Verein Deutscher Zeitschfifenverleger (VDZ), organisation of German Magazine Publishers. An average of 513 000 copies were sold per Bravo issue in 2009, with a peak of 565 000 in July.

 Enclosures 6-8: extracts from an internal survey carried out for the opponent by AWA (an independent market research institute). They show that the degree of awareness of ‘BRAVO’ was 85.7 % in 2017, 86.6 % in 2016, 86.3 % in 2015 and 86 % in 2014. Intern survey about use of media of consumers conducted, according to the opponent, by ‘Institut Forsa’ in 2013 and ‘Institut Respondi’ in 2015. The survey was based on a sample of 1266 interviewees in 2013 and 1500 interviewees in 2015 for consumers between 9 and 17 years old. The degree of awareness for BRAVO was 75 % in both years. However, no indication is given of the questions put to the people surveyed.

 Enclosures 9-20: copies of various articles (dated from 2000 to 2011) about BRAVO magazine, which is defined as a ‘cult classic magazine’. According to Kress-Report (2001): ‘turnover in the first six months mean a plus of 75.5 percent in relation to the same period of the year before’. In relation to the 50^th anniversary an article states that ‘there are no signs of midlife crisis: the youth magazine is doing very well again. In the first quarter of this year (2006) “Bravo” sold more than 800,000 copies, 4.2% more than the previous year’. An article in Augsburger Allgemeine, 2008, states: ‘In 2006, ‘Bravo-, Europe’s most widely circulated youth magazine, celebrated 50 years of existence. Despite competition on the Internet, Bravo is currently read by over 2.2 million young people (above all, 12-18-year-old), not counting more recent offshoots such as “Bravo Girl!” Or the CD series “Bravo Hits”…’. These articles provide indications about the success and long-standing presence on the German market of the opponent’s magazine BRAVO.

 Enclosures 21 and 22: according to a market survey conducted in 2005 by W & V, 40 % of the German teenagers (sample of 303 interviewees between 8 and 16 years) think that BRAVO is a mark which should not be missing in Internet and 27 % think that BRAVO is a cool trade mark. Moreover, in September 2012 BRAVO had 460 000 fans in Facebook, generating monthly 30 000 additional fans. It shows that, as of May 2018, BRAVO magazine had 830 533 on Facebook, and 400 000 on Instagram. Furthermore, this magazine had nearly 307 000 followers on Twitter.

 Enclosure 23 and 24: documents from IVW and AGOF according to which the ‘BRAVO’ website had more than 7 million page impressions and more than 2.4 million visits (January-May 2018).

 Enclosure25 and 26: screenshot of the opponent’s website bravo.de. regarding the ‘BRAVO view app’, by means of which the magazine contents can be seen on mobile phones. The BRAVO App for Google Playstore and Apple iTunes Store were introduced in 2012.

 Enclosures 27 and 28: extracts from the Guinness Book of Records confirming that the ‘BRAVO Hits’ CD is one of the most successful CD series of all time in Germany. Copies of articles and press cuttings in relation to ‘BRAVO Hits’, including a press release, dated 2018, stating that ‘since the first issue on April 21, 1992, the BRAVO Compilations offer the brand-new hit and chart repertoire four times a year […] The compilation is an important part of the great German youth brand. BRAVO Hits is by far the most successful compilation’.

 Enclosures 29-31: extracts from Internet websites in relation to BRAVO Supershow, a concert that takes place annually each spring since 1994. The award BRAVO Otto is given annually since 1957 to the most favourite stars of BRAVO readers, for example Tom Cruise in 1987, Brad Pit in 1995 or Jennifer Lopez in 2002. Since March 2005, BRAVO has been part of the Real Life Soap ‘Freunde – Das Leben geht wieter!’ on the TV channel ProSieben.

 Enclosure 32: pictures and articles regarding the opponent’s initiative to help people get their first job (named ‘BRAVO job attack’), and a campaign against cyberbullying.

 Enclosure 33: information about BRAVO TV, German television programme broadcasted from 1985 to 2007, with several interruptions, in which similar topics as the BRAVO print magazine were covered.

 Enclosure 34-37: covers of the magazines BRAVO Girl, BRAVO Sport and BRAVO TuberStars. Facebook and Twitter pages for the magazines BRAVO Girl and BRAVO Sport.

Most of the evidence submitted by the opponent is in German. However, the opponent is not under any obligation to translate the evidence filed to demonstrate the reputation of the earlier mark, unless it is specifically requested to do so by the Office (Article 7(4) EUTMDR in conjunction with Article 24 EUTMIR). Therefore, taking into account that the relevant parts of the evidence are translated into English (partial translations are also provided in the opponent’s observations of 25/01/2019), and the self-explanatory character of some documents, such as the magazine covers, the Opposition Division considers that there is no need to request a translation.

The evidence, together with the opponent’s arguments, shows that BRAVO is a magazine for teenagers (first published in Germany in 1956), which has become one of the most famous publications on the German market for teenagers. It enjoys a particularly high brand recognition among the relevant public (85.7 % in 2017, 86.6 % in 2016, 86.3 % in 2015). As shown in the press articles submitted by the opponent, BRAVO magazine is a ‘cult classic magazine’. These articles also provide indications about the success of the magazine BRAVO: ‘…Europe’s most widely circulated youth magazine’…, ‘…the youth magazine is doing very well again…’. The evidence also shows other ‘BRAVO’ publications, specifically BRAVO Girl and BRAVO Sport magazines.

The ‘BRAVO’ brand has been used, inter alia, in famous compilations of music, holding of concerts, prize-giving ceremonies and television programmes. In addition, the trade mark ‘BRAVO’ promoted initiative to help people get their first job and a campaign against cyberbullying.

Despite the fact that some of the evidence was not dated, the remaining evidence provides sufficient indications that the earlier trade mark, ‘BRAVO’, has been subject to long-standing and intensive use and is generally known on the relevant German market for magazines. The relevant public is well aware of the mark in relation to the aforementioned goods, as confirmed by the surveys, the press articles submitted by the opponent, the information about the relevant online portals and the information about the ‘BRAVO App’. On the basis of the documents submitted, the Opposition Division concludes that the earlier trade mark ‘BRAVO’ has acquired a reputation in Germany for some of the relevant goods for which reputation is claimed and for which the earlier mark is registered. Specifically, reputation is proved for magazines, which form an objective subcategory of the opponent’s printed matter, especially magazines in Class 16.

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

b) 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. The signs are visually and aurally similar to an average degree and conceptually highly similar.

Taking into account that the signs have been found similar in all aspects of the comparison, the examination of the existence of a risk of injury will proceed.

c) The ‘link’ between the signs

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

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

 the degree of similarity between the signs;

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

 the strength of the earlier mark’s reputation;

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

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

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

In the present case, the signs are visually and aurally similar to an average degree, and conceptually similar to a high degree.

As seen above, the earlier mark is reputed in Germany, due to its long-standing and extensive use that was made of the sign in the territory in relation to magazines. In that regard, it is worth recalling that it was the German most commercially successful youth magazine. Therefore, the conclusion was drawn that the earlier mark’s has a reputation.

Due to such extensive use, the earlier mark - which is inherently distinctive to an average degree - has acquired a high degree of recognition among the relevant public and, as a result, an enhanced distinctive character.

The establishment of a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

The services for which registration is sought are sale of certain goods (key rings, magnets, clothing, handbags, headgear, stationery and jewellery) that, apart from stationery, obviously do not belong to the same market sector as magazines. Nevertheless, some of those goods pertain to the fashion sector and, in general, all of the goods can be aimed at teenagers, of which the opponent’s magazines are directed and cover. Moreover, as seen above, the opponent’s magazine is one of Europe’s biggest and most successful teenager magazine.

It is common practice in some sectors to use a reputed mark for other goods or services in order to transfer the positive characteristics perceived by the public to the new goods and services and exploit the prior investment made in promoting the brand. In the present case, the opponent has proven that it has expanded its commercial field of activity to goods and services as diverse as recorded music, organisation of music events, education services or TV broadcasting. Furthermore, it is quite common that magazines offer a free gift for subscribers such as key-rings, magnets, T-shirts, tote bags, caps, pencils or earrings. Therefore, the goods offered for sale are sufficiently related to, and have a connection with, the opponent’s magazines for which the earlier mark is reputed. Consequently, the possibility that consumers may associate the earlier mark when encountering the contested sign is high.

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, namely the German-speaking public, 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.

The opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to the distinctive character 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 argues that the ‘young’ and ’cool’ image of ’BRAVO’ will likely to be transferred to the services offered under ‘TORO BRAVO’. The impression that such goods and services are somehow related to, and supported by the opponent’s ‘BRAVO’ mark, could help the applicant to establish this new products and services and increase customer and user numbers, as ‘BRAVO’ consumers will be attracted by the goods and services, which will erroneously perceive as new service of the opponent’… the applicant ‘cannot be allowed to take advantage of the repute of BRAVO. Building up such a reputation has cost the opponent an enormous effort and a significant amount of money. The opponent should therefore be the only one to benefit therefrom’.

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).

Taking into account the contested services in Class 35 for which a link has been found with the opponent’s goods in Class 16, the relevant public is the public at large and the degree of attention is average.

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, which 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; 12/03/2009, C‑320/07 P, Nasdaq, EU:C:2009:146; 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).

The applicant’s intention is not a material factor. Taking unfair advantage of the distinctiveness or the repute of a trade mark may be a deliberate decision, for example, where there is clear exploitation and free-riding on the coat-tails of a famous mark, or an attempt to trade upon the reputation of a famous mark. However, taking unfair advantage does not necessarily require a deliberate intention to exploit the goodwill attached to someone else’s trade mark.

The earlier mark has obtained a reputation and has become an attractive and powerful brand in Germany. The evidence submitted by the opponent demonstrates that the earlier mark has a positive image and is associated with “cool” and youth that several generations have passed in the last decades.

As explained in section c) of this decision, considering the reputation of the earlier mark, the visual, aural and conceptual similarities between the signs, and the fact that the conflicting goods and services are connected, the relevant public will make a link between the marks. This link will create an association from which the applicant will commercially benefit as the image of ‘cool’ and youth will be easily transposed to the applicant’s services sale of key rings, magnets, clothing, handbags, headgear, stationery and jewellery in Class 35. Therefore, there is a high probability that the use of the mark applied for may lead to free-riding, that is to say, it would take unfair advantage of the reputation of the earlier mark and the considerable investments undertaken by the opponent to achieve that reputation. The use of the trade mark applied for could also lead to the perception that the applicant is associated with or belongs to the opponent and, therefore, could facilitate the marketing of the services for which registration is sought.

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

Other types of injury

The opponent also argues that use of the contested trade mark would be detrimental to the distinctive character 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 partly well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested services in Class 35.

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

COSTS

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

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

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Saida CRABBE

Carlos MATEO PÉREZ

Chantal VAN RIEL

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.