OPPOSITION No B 3 053 263

Bayerische Motoren Werke Aktiengesellschaft, Petuelring 130, 80809 München, Germany (opponent), represented by Klaka, Delpstr. 4, 81679 München, Germany (professional representative)

a g a i n s t

AB Holding Management, 119 rue Michel Aulas, Parc Millésime, 69400 Limas, France (applicant), represented by Regimbeau, 139 rue Vendôme, 69477 Lyon Cedex 06, France (professional representative).

On 24/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 053 263 is partially upheld, namely for the following contested goods:

Class 12: Vehicles and conveyances.

2. European Union trade mark application No 17 865 105 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 865 105 for the word mark ‘MiniMoky’. The opposition is based on international trade mark registration No 1 339 740 designating European Union for the figurative trade mark and German trade mark registration No 30 301 779 for the word mark ‘MINI’ The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

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

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

• The signs must be either identical or similar.

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

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

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the 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 marks

According to the opponent, the International trade mark registration No 1 339 740 designating European Union for the figurative trade mark and German trade mark registration No 30 301 779 for the word mark ‘MINI’ have a reputation in the European Union and Germany, respectively.

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 25/02/2018. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the European Union and Germany 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

German trade mark registration No 30 301 779, ‘MINI’

Class 12: Motor vehicles and their parts, included in class 12.

International trade mark registration No 1 339 740 designating European Union

Class 12: Vehicles and parts thereof included in this class; engines for motor vehicles; shaped covers for steering wheelsand vehicle seats; air pumps for inflating vehicle tires; sun shades; roof racks; luggage carriers and nets; cyclecarriers, sail board carriers, ski carriers and snow chains; machine coupling and transmission components forland vehicles; tow ropes and tow bars; trailer couplings; anti-burglar and anti-theft security devices; bicycleholders and bicycle lifts; anti-skid chains, straps and clamps; head rests; mudguards; safety belts and air bags; tanks; warning signs; hazard flasher; wind deflectors; sun screens and blinds; decorative trimming and stripes; luggage trunks; motorcycle accessories, namely anti-theft security devices, repair outfits for inner tubes, luggage containers, luggage racks, air pumps, pack bags, stands, tank rucksacks and bags, facings; bicycles and bicycle accessories; pushchairs and pushchairs accessories; child seats and child seats accessories; safety seats for infants; wheels; tires; anti-theft, security and safety devices and equipment for vehicles; electric operated anti-carjacking systems and instruments; electric cigar and cigarette lighters for motor vehicles

The opposition is directed against the following goods and services:

Class 12: Vehicles and conveyances.

Class 25: Clothing; footwear; headgear

Class 35: Advertising, marketing and promotional services; business analysis, research and information services; business assistance, management and administrative services; auctioneering services; rental of vending machines; administration of newspaper subscription [for others]; mail order retail services connected with clothing accessories; mail order retail services for clothing; mail order retail services for cosmetics; mail order retail services related to alcoholic beverages (except beer)

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 18/12/2018 the opponent submitted the following evidence:

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 of the following documents:

- Internet extracts showing ‘MINI’ cars models and ‘Wikipedia’ extracts regarding the history of the ‘MINI’ cars where it is underlined that the ‘MINI’ car is considered ‘an icon of 1960s British popular culture’ (Annexes A 3, A 4 and A5).

- Affidavit issued by Tim Heitmann, Legal Counsel of the opponent’s company in the ‘Trademarks, Designs and legal issues relating to Intellectual property law’ containing information regarding a considerable number of ‘MINI’ cars sold between 2014 and 2018 and a significant amount of money invested in advertising ‘MINI’ brand between 2013 and 2017 in UK, Germany and EU (Annex A 6).

- List of UK press articles from 2001 to 2006 regarding the mark ‘MINI’ and sample of articles published on, inter alia, ‘Top Gear Magazine’ and ‘Autocar’, between 2001, and 2003 regarding features and characteristics of some ‘MINI’ car models such as ‘MINI XXL’ (Annexes A 7 and A 8).

- British press reviews about the success and high performance of ‘MINI’ cars dating from 2005 to 2010 and German magazine and newspaper articles about ‘MINI’ cars between 2003 and 2014. (Annexes A 9, A 10 and A 11).

- Press reports titled ‘Cool im Cockpit’ and ‘Die starken Marken’ (2013) regarding the success of ‘MINI’ cars and media analysis regarding the facelifts of MINI car models published in 2018 as well as books and magazines about the ‘MINI’ brand published in 1984, 1999, 2004 and 2006 (Annex A 12 to A 20).

- Lists of the awards won by ‘MINI’ between 2001 and 2008 such as ‘best used small car’, ‘Best Supermini’, ‘CAR franchise of the year’ (Annexes A 21 and A 22).

- German automotive publication “Automobilwoche” in 2011 where “MINI” was voted “Car of the Decade” (Annex A 23).

- Printout from the German website ‘Zehn.de’ where ‘MINI’ was named the fifth most successful cult brand of all times followed by brands like Adidas (Annex A 24).

- Results of a brand awareness surveys conducted on behalf of the opponent by GfK in May to August 2005 (sample of 800 persons), September/October 2008 (sample of 800 persons), 2012 (sample of 1600 persons) in the United Kingdom from which it emerges that the trade mark ‘MINI’ has a certain degree of recognition among its competitors in the car sector (Annexes A 25, A 27, A 27).

- Results of the survey conducted by Institut für Demoskopie Allensbach in 2014 in Germany (a sample of 1.507 persons) according to which 80% of the total German population are familiar with the brand name “MINI”; 70% actively associate it with cars or small cars (Annex A 28).

- ‘Interbrand’ studies dated 2015, 2016, 2017 and 2018 from which it emerges that is among the Top 100 “Best Global Brands” and where ‘MINI’ is defined as ‘a stood for intelligent design, iconic style and unparalleled motoring thrills’ since 1959 (Annexes A 29, A 30)

- Samples of print advertisements related to the trade mark on the website mini.co.uk where some ‘MINI’ car models are presented such as ‘MINI ONE’ and ‘MINI Cooper’ (Annex A 31)

- ‘MINI’ car brochures for German territory (from 2001 to 2005) and United Kingdom (from 2001 to 2007 and 2010, 2013) where the trade marks ‘MINI’ and appear in relation to car models such as ‘MINI Countryman’ and ‘MINI Cooper’ (Annexes A 32 to A 37)

- Copies of press folders regarding Frankfurt International Motor Show (IAA) 2013, Paris Motor Show 2014, IAA Frankfurt 2015 and Paris Motor Show 2016 where the trademarks ‘MINI’ and are displayed and associated to design, style and technology (Annex A 38).

- Media information published by the opponent regarding ‘MINI’ models cars (e.g. MINI Cooper and MINI Countyman) dated 2016/2017 (Annexes A 39, A 40)

- Brochures addressed to German and English public dated between 2009 and 2018 and regarding, inter alia, fashion and clothing articles collections (such as boots, t-shirts, jackets, blouses, coats, bags and luggage hats, shorts, sport shoes, trolleys, bath suits, trousers) bearing the mark ‘MINI’ and . (Annex 41 to 50)

- Printouts of Internet web pages mini.co.uk, mini.de and shop.mini.com, showing that the trade mark ‘MINI’ is used also for lifestyle products and clothing goods such as t-shirts, hats and coats (Annexes 51 and 52).

- Information regarding the media coverage on the “MINI” fashion show at Pitti Uomo 94 (one of the world’s most important platforms for men’s clothing and accessory collections) that took place in Florence (Italy) in June 2018 (Annex 53).

- Screenshots of the opponent’s website and brochures regarding ‘MINI’ car models showing the mark (Annexes A 54 to A 58).

- Screenshots of the webpage ‘minichallenge.co.uk’ showing use of the “MINI” brand in relation to the “MINI Challenge” racing series in the United Kingdom and copy of a brochure titled ‘MINI Challenge 2017’ (Annexes A 58 A 58).

- Brochures regarding various networking events that were offered under the “MINI” brand at the London Design Festival 2016 and during the Milan Design Week 2016 (Annexes A 60 and A 61).

- Decisions issued by the German Federal Patent Court and other Courts and IP Offices within the EU (Hungary and France) recognising the well-known character and reputation of the trade mark ‘MINI’ (Annexes A 62, A 63, A 64, A 65, A 66,A 67, A 68 and A 69).

Having evaluated all the documents listed above, the Opposition Division concludes that the earlier marks have a reputation in Germany and European Union for cars that belong to the broader category of the opponent’s motor vehicles in Class 12 (German trade mark registration No 30 301 779) and vehicles (international trade mark registration No 1 339 740). In fact the evidence refers only essentially to ‘cars’ and not to all types of ‘motor vehicles’ or ‘vehicles’ in Class 12.

As for the timeline, most of the evidence relates to the period of time between 2001 and 2018, although the use of the trade mark ‘MINI’ is deemed to go back to 1960, as shown in the Wikipedia articles (Annex A 5).

The notable amount of evidence submitted by the opponent, that refers mainly to Germany and the United Kingdom (even if part of the evidence refers also to the worldwide market such as the ‘Interbrand study’ shown in the Annexes A 29 and A 30), leaves no doubt that the earlier word mark ‘MINI’ and figurative mark have been subject to long-standing and intensive use and are generally known and reputed in Germany and the United Kingdom, where both the figurative and word version of the mark ‘MINI’ enjoys a consolidated position in the car sector, as has been attested by diverse independent sources, such as the survey’s results, the automotive publications and the ‘Interbrand’ studies.

Indeed, the press reviews, the press reports, the surveys, the awards and all the evidence related to the success of the ‘MINI’ cars all unequivocally show the brand exposure and visibility of the earlier marks. Furthermore, the existence of the reputation of the mark ‘MINI’ has also been confirmed by previous decisions of national authorities.

With regard to the earlier European Union trade mark , it is considered that the high degree of recognition for cars among the relevant public at least in Germany and the United Kingdom represents a relevant portion of the European Union territory.

In this regard it should be recalled that according to the judgment of 06/10/2009, C 301/07, Pago, EU:C:2009:611, § 29 and 30, reputation in one Member State may suffice for the whole of the EU territory, taking into account both the size of the geographical area concerned, the proportion of the population and the goods and services at issue. Consequently, in the case at issue, reputation in the United Kingdom and Germany is sufficient for the whole of the European Union.

However, the evidence does not succeed in establishing that the earlier trade marks have a reputation for all of the goods for which reputation has been claimed, as the evidence and also the opponent’s arguments, essentially relate to cars in Class 12.

2. The signs

German trade mark registration No 30 301 779 MINI International trade mark registration No 1 339 740 designating European Union	MiniMoky
Earlier trade marks	Contested sign

The relevant territories are Germany and 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).

Earlier mark 1) is a word mark consisting of the word ‘MINI’. Earlier mark 2) is a figurative mark consisting of the word element ‘MINI’ written in standard black upper case letters on a white circle with a black outline flanked to its left and right by lines of different lengths which, given their arrangement, may recall stylised wings.

The term ‘MINI’, present in both earlier marks, is commonly used in trade to denote a characteristic of goods, and it is understood by the entire relevant public as ‘very small’ or ‘tiny’. The term ‘MINI’ of the earlier mark 2) is, therefore, at best, distinctive to a very low degree for the goods for which the earlier mark 2) enjoys reputation (i.e. cars) as it will be perceived as referring to their size. The figurative element is, consequently, the more distinctive element of the earlier mark 2), as it does not refer to any characteristics of the relevant goods.

Regarding earlier mark 1), it should be noted that earlier marks, whether EUTMs or national marks, enjoy a ‘presumption of validity’. The Court made it clear, in its judgment of 24/05/2012, C-196/11 P, F1-Live, EU:C:2012:314, § 40-41, that ‘in proceedings opposing the registration of a European Union trade mark, the validity of national trade marks may not be called into question’. The Court added that ‘it should be noted that the characterisation of a sign as descriptive or generic is equivalent to denying its distinctive character’. Therefore, considering what has been stated above in section c) of this decision and taking into account the above principle, the distinctiveness of earlier mark 1) must be seen as minimal for the relevant goods (i.e. cars).

The contested sign is the word mark ‘MiniMoky’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the word is represented in upper or lower case letters or in a combination thereof.

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, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). In this case, the word ‘MINI’ of the contested sign, having the meanings explained above, will be perceived by the relevant public as an adjective preceding the word ‘Moky’ which has no meaning and is, therefore, distinctive.

In the light of the above, the word ‘MINI’ in the context of the contested sign will be perceived as an adjective qualifying the subsequent word ‘Moky’ and not as an indicator of origin. Therefore, contrary to the opponent’s opinion, the Opposition Division deems that the relevant public will rather focus on the second part of the contested sign (i.e. the word ‘Moky’).

Neither of the marks under comparison has any element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in ‘MINI’, which, as explained above, has a meaning for the entire relevant public. The signs differ in the more distinctive elements of the signs, namely ‘Moky’ of the contested sign, and the figurative element of earlier mark 2). Bearing in mind the very limited distinctive character of the common element ‘MINI’, the signs are visually similar to a very low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the word ‛MINI’, present identically in the earlier marks and contested sign. The pronunciation differs in the sounds of the letters ‛Moky’ of the contested mark, which have no counterpart in the earlier marks. Taking into account the limited distinctiveness of the coinciding element, the signs are aurally similar to a very low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs coincide in the meaning of the verbal element ‘MINI’. Earlier mark 2) introduces a conceptual difference related to its figurative element (i.e. stylised wings depicted on the sides of a white circle). To that extent and bearing in mind the very low distinctiveness of the word ‘MINI’, the signs are at best conceptually similar to a very low degree.

Taking into account that the signs have been found similar in at least one aspect of the comparison, the examination of the existence of a risk of injury will proceed.

3. The ‘link’ between the signs

As seen above, the earlier marks are reputed and the signs are similar to some extent. 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 establishment of such 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.

According to the Court of Justice of the European Union,

It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 48.)

The Court of Justice has also noted,

… that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.

In the present case, the signs are visual, aurally similar to a very low degree and at best they are also conceptually similar to a very low degree on account of the only coinciding element ‘MINI’.

Regarding the goods and services in dispute, it must be noted that the contested goods in Class 12, vehicles and conveyances are identical to the opponent’s cars as they include as a broader category the opponent’s cars. On the other hand the contested goods in Class 25 and services in Class 35 are dissimilar to the opponent's goods for which the earlier marks enjoy reputation, i.e. cars, as they have no relevant points in common. In fact, they have different natures and purposes. They are not offered through the same distribution channels and are not offered / provided by the same undertakings. These goods and services are neither complementary nor in competition with each other.

Bearing in mind the identity between the contested vehicles and conveyances and cars and the high repute of the earlier marks in the car sector, the Opposition Division concludes that, despite the very low similarity between the signs on the three levels of comparison, there exists, at least prima facie, a possibility that when encountering the contested mark in relation to the above mentioned goods the relevant consumers associate it with the earlier mark, in the sense that they establish a mental ‘link’ between the signs in relation to the contested vehicles and conveyances. 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) CTMR (judgment of 26/09/2012, T 301/09, ‘CITIGATE’, paragraph 96).

However, the very low degree of similarity between the signs and combined with the fact that the earlier marks enjoy a reputation only for cars are not sufficient to conclude that the relevant public will establish a mental association between the signs at issue in relation to the remaining contested goods and services, namely those in Classes 25 and 35, that have been found dissimilar to the opponent’s cars. Indeed, while it is true that the public targeted in relation to the goods and services at issue may overlap to some extent, they belong too very removed economic sectors and the combination of the distance between the goods and services and the very limited distinctiveness per se of the word 'MINI' together with the very low degree of visual, aural and conceptual similarity between the signs leads the Opposition Division to the conclusion that it is unlikely that the contested sign will bring the earlier marks to the mind of the relevant public. Consequentially, there cannot be a risk of injury in the sense of the Article 8(5) EUTMR for these goods and services.

Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected insofar as based on this article and directed at these goods and services.

The examination of the opposition under Article 8(5) EUTMR will therefore continue only in relation to those goods for which it has been determined above that consumers would be likely to establish a mental ‘link’ between the contested sign and the earlier marks.

4. 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 the following:

- the applicant is not only going to, but is in fact trying to take advantage of the reputation and distinctive character of the opponent’s renowned trade marks “MINI” by attracting and transferring to its own goods and services all the goodwill associated with the “MINI” mark.

- the use of the trade mark application “MiniMoky” is likely to also cause detriment to the distinctive character of the earlier marks “MINI”.

Therefore, 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 marks and be detrimental to the distinctive character of the earlier trade marks.

Unfair advantage (free-riding)

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

The opponent bases its claim on the following.

• The applicant clearly seeks to take unfair advantage of the reputation and the distinctive character of the earlier marks. Not only does it use the famous “MINI” mark as part of its mark; it also combines the trade mark “MINI” with a word element that is almost identical with second part of the sign “Mini Moke”, which was used by the former owners of the “MINI” mark for a popular car model.

• The applicant has actually started using the trademark ‘MINI’ in an illegitimate manner. In fact ‘on the website at www.emokegroup.com (a website that, according to the opponent’s information, is run by a company that is affiliated with the applicant’s company), a car that looks a lot like the “Mini Moke” produced by the opponent’s predecessors in title, is advertised with the words ‘The Mini Moke is back’ and ‘The New Mini Moke’, thus infringing the opponent’s earlier rights in the famous trade mark “MINI” (Annex A 75).

• To make things even worse, the applicant registered the EU trademark No  17 865 104 ‘MiniMokeand’ and EU trade mark No 17889175, 'EMOKE the New Mini Moke'.

• Accordingly there is no doubt that the applicant is not only going to, but is in fact trying to take advantage of the reputation and distinctive character of the opponent’s renowned trade mark “MINI” by attracting and transferring to its own goods and services all the goodwill associated with the “MINI” mark.

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect. (27/11/2008, C 252/07, Intel, EU:C:2008:655, § 36.).

In the present case, it has been found that the signs at issue display similarities to the extent that they coincide in ‘MINI’. Moreover, the contested goods in Class 12 are identical to the goods for which the earlier marks enjoy reputation, namely ‘cars’. Also, the opponent's arguments and the evidence (e.g. Annexes A 31, A 32 to A 37, A 39, A 40), show that that the opponent often distinguishes its specific car models by using its reputed mark ‘MINI’ followed by another name, such as ‘Cooper’ ‘Countryside’ and ‘Moke’ (being this last one an old MINI car model). This combination of words or structure resembles the structure of the contested sign ‘MiniMoky’ which will be perceived as also containing two words despite the fact they are conjoined.

Bearing in mind the foregoing, it is considered that, in view of the identity between the earlier ‘cars’ and the contested goods in Class 12 for which a ‘link’ exists, a substantial part of consumers may decide to turn to the applicant’s contested goods due to the mental association to the opponent’s reputed mark, thus misappropriating its attractive powers and advertising value. This may stimulate the sales of the applicant’s goods to an extent which may be disproportionately high in comparison with the size of its own promotional investment and thus lead to the unacceptable situation where the applicant is allowed to take a ‘free-ride’ on the investment of the opponent in promoting and building-up goodwill for its mark.

It must be also recalled that the protection under Article 8(5) EUTMR extends to all cases where use of the contested trade mark is likely to have an adverse effect on the earlier mark, in the sense that it is, inter alia, likely to result in misappropriation of the powers of attraction or exploitation of the earlier mark’s image and prestige (unfair advantage of the distinctive character or repute).

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 marks in relation to the contested goods in Class 12.

Other types of injury

The opponent also argues that the use of the contested trade mark would be detrimental to the distinctiveness 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 take three different forms. For an opposition to be well founded in this respect, it is sufficient if only one of these forms is found to occur. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark is likely to take unfair advantage of the repute of the earlier marks. It follows that there is no need to examine whether other forms also apply.

5. Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR insofar as it is directed against the vehicles and conveyances in Class 12.

The opposition is not successful insofar as the remaining goods and services are concerned.

With respect to the remaining contested goods and services, the examination of the opposition continues in relation to the opponent’s claims under Article 8(1)(b) 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.

1. The goods and services

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

German trade mark registration No 30 301 779

Class 12: Motor vehicles and their parts, included in class 12

International trade mark registration No 1 339 740 designating European Union

Class 12: Vehicles and parts thereof included in this class; engines for motor vehicles; shaped covers for steering wheels and vehicle seats; air pumps for inflating vehicle tires; sun shades; roof racks; luggage carriers and nets; cycle carriers, sail board carriers, ski carriers and snow chains; machine coupling and transmission components for land vehicles; tow ropes and tow bars; trailer couplings; anti-burglar and anti-theft security devices; bicycle holders and bicycle lifts; anti-skid chains, straps and clamps; head rests; mudguards; safety belts and air bags; tanks; warning signs; hazard flasher; wind deflectors; sun screens and blinds; decorative trimming and stripes; luggage trunks; motorcycle accessories, namely anti-theft security devices, repair outfits for inner tubes, luggage containers, luggage racks, air pumps, pack bags, stands, tank rucksacks and bags, facings; bicycles and bicycle accessories; pushchairs and pushchairs accessories; child seats and child seats accessories; safety seats for infants; wheels; tires; anti-theft, security and safety devices and equipment for vehicles; electric operated anti-carjacking systems and instruments; electric cigar and cigarette lighters for motor vehicles (international trade mark registration No 1 339 740).

Class 25: Clothing, footwear, headgear.

Class 35: Advertising; business management; business administration; office functions; demonstration of goods for advertising purposes; retail services relating to goods in class 12; services consisting in the bringing together, for others, of various goods [excluding the transport thereof]enabling customers to conveniently view and purchase the goods through a website specialized in the commercialization of motor vehicles and parts thereof.

The remaining contested goods and services are the following:

Class 25: Clothing; footwear; headgear

Class 35: Advertising, marketing and promotional services; business analysis, research and information services; business assistance, management and administrative services; auctioneering services; rental of vending machines; administration of newspaper subscription [for others]; mail order retail services connected with clothing accessories; mail order retail services for clothing; mail order retail services for cosmetics; mail order retail services related to alcoholic beverages (except beer).

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.

Before proceeding to the comparison of the goods and services at issue, it is reminded that the remaining contested goods and services have already been compared above under the grounds of Article 8(5) against the opponent’s goods in Class 12 for which the opponent has proven that the earlier marks enjoy reputation, namely for cars, and that these goods and services were found to be dissimilar.

For the same reasons the remaining goods and services are also dissimilar to the broad category of the opponent’s motor vehicles and their parts, included in Class 12 covered by the German trade mark registration No 30 301 779.Therefore, since the similarity of goods and services is a sine qua non for there to be likelihood of confusion, the comparison under Article  8(1)(b) EUTMR will proceed only in relation to the International trade mark registration No 1 339 740.

Contested goods in Class 25

Clothing; footwear; headgear are identically included in both lists of goods.

Contested services in Class 35

Advertising is identically included in both lists of services.

The contested marketing and promotional services are included in the broad category of, or overlap with, the opponent’s advertising. Therefore, they are identical.

The contested business assistance, management and administrative services are identical to the opponent’s business management; business administration as they are identically contained or overlap with the opponent’s services.

The contested auctioneering services are similar to the opponent’s retail services relating to goods in class 12, as both types of services have the purpose of making goods available to buyers, they target the same public and they have the same points of sale. Furthermore, these services are in competition.

The contested business analysis, research and information services have some relevant factors in common with the opponent’s business administration. Both types of services are intended to help companies with the performance of their businesses. This means that they have the same purpose, are addressed to the same public and can be provided by the same undertakings. Therefore they are similar.

The contested mail order retail services connected with clothing accessories; mail order retail services for clothing; mail order retail services for cosmetics; mail order retail services related to alcoholic beverages (except beer) are similar to the opponent’s retail services relating to goods in Class 12. They share the same nature as both are retail services, have the same purpose of allowing consumers to conveniently satisfy different shopping needs, and have the same method of use.

The contested rental of vending machines; administration of newspaper subscription [for others] are dissimilar to all the opponent’s goods and services in Classes 12, 25 and 35 as their natures, purposes and distribution channels are different.

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 that are supposed to be are directed at the public at large and business customers with specific professional knowledge or expertise.

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.

2. The signs

International trade mark registration No 1 339 740 designating European Union	MiniMoky
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The signs have already been compared above under the grounds of Article 8(5) EUTMR. Reference is made to those findings taking further into account that the term ‘MINI’ in both signs can be perceived as referring to the size or shape of the goods in Class 25 whereas in relation to the services in Class 35, it can be perceived as indicating that they are addressed or specially designed for small enterprises (e.g. advertising; business management; business administration) or that they are retail services of goods of small size. Therefore, in addition to what has already been stated above under the grounds of Article 8(5), the degree of distinctiveness of the verbal element ‘MINI’ in both signs is also highly reduced in relation to the goods and services in Classes 25 and 35 and as a consequence, the findings above under the grounds of Article 8(5) are equally valid for the comparison of the signs performed under Article 8(1)(b) EUTMR and in view of this, the signs are visually, aurally and conceptually similar to a very low degree.

3. 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.

This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The evidence submitted by the opponent to prove the repute of the earlier trade mark has already been examined above under the grounds of Article 8(5) EUTMR. Reference is made to those findings, which are equally valid for Article 8(1)(b) EUTMR.

As seen above, the earlier trade mark is reputed only for cars in Class 12. These earlier goods have been found dissimilar to all the remaining contested goods and services in Classes 25 and 35.

It is true that part of the evidence filed by the opponent also refers to clothing and footwear articles (Annex A 41 to 50 and A 51 and 52), but this does not demonstrate that the earlier trade mark has acquired a high degree of distinctiveness through its use in relation to these goods. Even if certain use of the trade mark is shown in relation to ‘clothing; footwear and headgear’ in Class 25, this evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public for these goods since there is no information about the sales volumes, the market share or the extent to which the trade mark has been promoted in relation to said goods. Under these circumstances, the Opposition Division concludes that the opponent has failed to prove that its trade mark has acquired a high degree of distinctiveness through its use for the above mentioned goods or for any other good or service apart from the cars in Class 12.

Thus, even if the earlier mark enjoys an enhanced distinctiveness for cars, the similarity of goods and services is a sine qua non condition for there to be likelihood of confusion.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark is highly reduced.

4. Global assessment, other arguments and conclusion

The goods and services are identical, similar or dissimilar to the opponent’s goods and services. The signs are visually, aurally and conceptually similar to a very low degree.

The similarity between the signs results from the verbal element ‘MINI’, which, as explained above, is highly reduced in relation to the goods and services in question.

The additional figurative element of the earlier sign, consisting in stylised wings depicted on the sides of a white circle as well as the additional word element ‘Moky’ of the contested sign are the most distinctive elements of the earlier mark and the contested sign, respectively, and create, therefore, significant aural, visual and conceptual differences between the conflicting signs.

It is true that usually the beginning of a sign has a stronger impact on consumers’ attention. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. However, in the present case, even though the only verbal element ‘MINI’ of the earlier mark is included in the contested sign in its entirety and constitutes its beginning, this consideration cannot apply, because of the highly reduced distinctive character of the word ‘MINI’.

In the present case, the differences created by the figurative element of the earlier mark and the letters ‘Moky’ of the contested sign are clearly perceptible and sufficient to exclude a likelihood of confusion, including a likelihood of association, taking into consideration the very limited distinctive character of ‘MINI’ and the low distinctiveness of the earlier mark as a whole.

It remains necessary to consider the opponent’s argument that it has several prior European Union trade marks, all characterised by the presence of the same word component, ‘MINI’ plus another word such as ‘Cooper’, ‘ONE’, ‘NEXT’ that constitute a ‘family of marks’. In its view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark, which contains the same word component as the earlier mark, will be led to believe that the goods identified by that mark may also come from the opponent.

In fact, the concept of the family of marks was exhaustively analysed by the General Court in the Bainbridge case (23/02/2006, T 194/03, Bainbridge, EU:T:2006:65). When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics that give grounds for regarding them as forming part of a single ‘series’ or ‘family’, a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.

Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’.

Secondly, the trade mark applied for must not only be similar to the marks belonging to the series, but must also display characteristics capable of associating it with the series.

In the present case, even if the evidence filed by the opponent were to demonstrate a certain use of some trade marks belonging to the family of marks (e.g. ‘MINI Cooper’ and ‘MINI Countryman’) this use is only in relation to cars and such goods have been found dissimilar to all the remaining contested goods and services in Classes 25 and 35 for the reasons explained above. Bearing this in mind and the fact that the similarity of goods and services is a sine qua non for there to be likelihood of confusion, the opponent’s arguments must be set aside.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected insofar it is based on Article 8(1)(b) EUTMR.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Martina GALLE

Angela DI BLASIO

ZANIECKA Katarzyna

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.