OPPOSITION No B 3 067 583

Groupe Canal+, S.A., 1, Place du Spectacle, 92130 Issy les Moulineaux, France (opponent), represented by Santarelli, 49, Avenue des Champs Elysées, 75008 Paris, France (professional representative)

a g a i n s t

Newton S.p.A., Corso Sempione 68, 20154 Milano, Italy (applicant), represented by Giacomo Ciammaglichella, Via Aureliana 63, 00187 Roma, Italy (professional representative).

On 26/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 067 583 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 917 321 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 917 321 for the figurative sign . The opposition is based on European Union trade mark registration No 8 699 291 for the figurative sign . 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 above mentioned 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.

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 13/06/2018. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely

Class 9: Decoders; remote controls; antennas satellite dishes.

Class 35: Retailing and wholesaling of set-top boxes; retail sale of aerials; arranging subscriptions to audiovisual programmes; arranging subscriptions to a television channel.

Class 38: Television communication; transmission of images and videos; television broadcasting; broadcasting of programmes via satellite, via cable, via computer networks (in particular via the internet), and via radio waves; audiovisual and cinematographic broadcasting, whether or not for interactive purposes; rental of aerials and satellite dishes; transmission of programmes and selection of television channels.

Class 41: Rental of decoders.

Class 42: Online downloading of films and other audiovisual programmes.

The opposition is directed against the following goods and services taking into account the limitation filed on 20/05/2019:

Class 9: Training software; teaching apparatus; audiovisual teaching apparatus; audiovisual teaching apparatus; teaching and instructional apparatus; instructional and teaching apparatus and instruments; electronic instructional and teaching apparatus and instruments; software for video games; none of the aforesaid goods relating to decoders, remote controls and satellite aerials.

Class 16: Manuals for instructional purposes; teaching materials [except apparatus]; instructional and teaching material (except apparatus).

Class 28: Video game apparatus; electronic games; games; smart toys.

Class 35: Advertising, marketing and promotional services; business assistance, management and administrative services; business analysis, research and information; none of the aforesaid services relating to the retailing and wholesaling of decoders, the retailing of aerials, subscriptions to audiovisual programmes and the arranging of subscriptions to a television channel.

Class 38: Telecommunications, none of the aforesaid services relating to the rental of aerials and dish aerials and television channel selections.

Class 41: Education, entertainment and sport services; education and instruction services; sporting and cultural activities; conducting of cultural activities; education and instruction; providing facilities for entertainment; providing of training; educational instruction; vocational skills training; business training services; provision of training courses; personnel training; provision of training and education; conducting workshops [training]; training in business management; business training services; provision of training courses; production of training videos; provision of training courses; instruction in group exercise; providing online courses of instruction; vocational education and training services; workshops (arranging and conducting of -) [training]; arranging and conducting of training seminars; arranging of training courses; arranging, conducting and organisation of workshops; consultancy relating to training and retraining; none of the aforesaid services relating to the rental of decoders.

Class 42: Science and technology services; IT services; research; none of the aforesaid services relating to online downloads of films and other audiovisual programmes.

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 14/03/2019, the opponent submitted evidence. When attaching the evidence, the opponent states that the information filed is confidential, however, it does not give any justification in support of its claim. In any event, the Opposition Division will describe the evidence in general terms only. The evidence to be taken into account is the following:

Annex 3

• Exhibit 1.1: examples of packaging, in French, on which the earlier mark is reproduced. The date 31/12/2011, in small print, is legible on one of the packaging samples and the price displayed is in EUR.

• E xhibit 1.2: copy of a Wikipedia article ‘Cube Canal+’, in French, with a partial translation into English, according to which ‘during September 2009, the advertising campaign for +LE CUBE on television was run by Pauline Lefèvre, Miss Weather Forecast of Canal+, who parodies advertisements for make-up products. In February 2009, Canal+ published the number of +LE CUBE decoders proposed for rental on its commercial network: 165 000 subscribers among 10.2 million subscribers of CANAL+GROUP purchased this subscription.’ This document provides references to and photographs of the opponent’s ‘+LE CUBE’ decoder.

• Exhibit 1.3: copy of a guide to the ‘+LE CUBE’ decoder, dated 28/10/2011, in French, with a partial translation into English. It describes the decoder’s various features which include access to numerous applications, like Deezer, Radioline, La Chaîne Météo and My Junior Nickelodeon. It features the logo.

• Exhibit 2: several screenshots dated 11/01/2018 of videos presenting the ‘+LE CUBE’ decoder posted on YouTube in 2008 and in 2013, in French, with a partial translation into English. The videos had approx. 2 550 views and the logo is displayed.

• E xhibit 3: several screenshots from the opponent’s website www.lesoffrescanal.fr, in French, with a partial translation into English, obtained using the Wayback Machine. They are dated 01/05/2013, 02/07/2014, 05/04/2015 and 22/05/2015 and refer to the ‘+LE CUBE’ decoder and its features as well as show the product.

• Exhibit 4: screenshots printed on 20/12/2017, from the opponent’s website www.canalplus-caraibes.com, in French, with a partial translation into English, obtained using the Wayback Machine. They are dated 04/07/2014, 26/03/2016 and 06/12/2016 and demonstrate, inter alia, various ‘+LE CUBE’ decoders:

• Exhibit 5: copy of the opponent’s commercial brochures from January and September 2015 in French with a partial translation into English. It is stated that +LE CUBE is the best TV experience and provides high quality image and sound everywhere in France as advertised by the slogan:

‘Two cubes, two ways of living the best TV experience’

• Exhibit 6: three screenshots extracted from www.pluslecube.fr by the Wayback Machine, dated 2012, 2013 and 2014, with the ‘+LE CUBE’ decoder offer, in French, with a partial translation into English. The logo is displayed.

• Exhibit 7: copy of an advertisement from the ‘Auto Plus’ magazine with the slogan: ‘The unique decoder 100% TV which reinvents the TV’. It refers to a promotional offer valid from 22/05/2013 to 25/06/2013 and features the opponent’s decoder with a large ‘+’ on top and the words ‘+LE CUBE’ in the decoder’s display:

• Exhibit 8: five screenshots extracted from the opponent’s website www.pluslecube.fr by the Wayback Machine, dated between 2012 and 2014, featuring a photograph of the opponent’s decoder and the slogan ‘+LE CUBE The new TV experience by CANAL + and CANALSAT’.

• Exhibit 9: several screenshots from a promotional video posted on YouTube in 2013, in French, with a partial translation into English. The video had 9 596 views and displays a decoder as the following: . The screenshots are accompanied by a witness statement and two invoices from the advertising company.

• Exhibit 10: several screenshots from a promotional video posted on YouTube in 2014, in French, with a partial translation into English. The video had 1 321 views. Two versions of the ‘LE CUBE’ decoder are displayed with logo.

• Exhibit 11: several screenshots from a parody video ‘Publicite parodie Canal +Le Cube’ posted on YouTube in 2015, in French, with a partial translation into English. It features information and photographs of a decoder, and the following sign with an advertising slogan ‘+LE CUBE The new TV experience’ .

• Exhibit 12: copies of advertising brochures, dated October 2014, in French, with a partial translation into English. They feature the opponent’s decoders, the earlier mark and advertising materials regarding new decoders:

• Exhibit 13: copies of images referring to the Satquiz game created by the opponent to promote ‘+LE CUBE’ decoders. Attached are two extracts from the Wayback Machine extracted from the satquiz.canalsat.fr website about the quiz and dated 09/09/2012 and 21/09/2012. They are accompanied by an internal study in French regarding the number of users participating in the game.

• E xhibit 14: photographs of the ‘+LE CUBE’ cubical key rings, promoting the opponent’s decoders branded with the earlier mark, accompanied by the corresponding invoices from 2010.

• Exhibit 15: copies of several articles (paper and online editions) from 2015-2017 presenting the opponent’s decoder ‘+LE CUBE’, accompanied by partial translations into English, including the following sources:

• t he www.clubic.com website, 09/06/2015, entitled ‘The Cube S: Canal + launches a small decoder “100% Web”’, according to which the opponent launched ‘LE CUBE S’, a miniature decoder ‘100% Web’ that can run with (almost) any internet connection. According to this document, this is the first time that a complete television package was available via the internet regardless of the internet provider. The decoder’s image is shown;

• the www.frandroid.com website, 09/06/2015, entitled ‘Canal +: a new Cube S decoder with mobile functions’;

• the www.journaldugeek.com website, 09/06/2015, entitled ‘Canal + unveils his new decoder Cube S’;

• the www.audiovideohd.fr website, 10/06/2015, entitled ‘Canal + unveils his new decoder Cube S: 0TT, HEVC, Ultra HD 4K…’;

• the www.telesatellite.com website, entitled ‘myCANAL, Ultra HD, Cube S: la «nouvelle expérience» de Canal+’, 09/06/2015;

• Next INpact, 14/03/2014, entitled ‘Canal + account to directly pass through the internet to broadcast its channels’;

• the www.lesechos.fr website, 09/06/2015, entitled ‘Canal+ launches a mobile mini-decoder’, according to which the new decoder ‘fits easily in the hand, allows access to all the contents of the encrypted home and is mainly ‘100% OTT’ (over-the-top)’ and ‘Two hundred engineers have also been recruited to build the OTT infrastructure — and control costs and quality). Canal + will soon have its own ‘CDN’, a dedicated internet network’;

• Les Echos (paper version), 10/06/2015, entitled ‘Canal+ lance un mini-decodeur mobile’, featuring the following picture of the new decoder:

• Le Figaro, economie, 10/06/2015, entitled ‘Canal + is betting on Internet TV’, according to which the opponent has launched a new decoder that allows the users to dispense with telecom operators’ TV box’;

• 20 Minutes (paper and online version), 10/06/2015, entitled ‘Canal + targets youth with its gem’;

• La Lettre, 10/06/2015, entitled ‘Canal + soon leading the OTT in France?’ with the following photograph of the decoder: ;

• the teleloisirs.fr website, 09/06/2015, entitled ‘Canal + presents the Cube S, his new decoder’;

• the lexpress.fr website, 09/06/2015, entitled ‘How Canal + wants to seduce a new generation of subscribers’;

• the universfreebox.fr website, 09/06/2015, entitled ‘Canal + launches the Cube S, which competes directly with ISPs TV box’;

• the geek-me-in-famous.com website, 09/06/2015, entitled ‘Canal + unveils his new decoder Cube S’;

• the www.broadbandtvnews.com website, 08/06/2015, entitled ‘Canal+ launches OTT version of Le Cube’. According to this article, ‘Canal+ is upgrading its distinctive cube-shaped receiver that connects to the internet via Wi-Fi’;

• r eddot 21, world of design; undated, but the content indicates ‘Red Dot: Winner 2006’, the Le Cube S decoder is referred to as being ‘truly a feat of design and technology’ and praised for its ‘iconic interface’. The following picture is provided:

• the www.quechoisir.org website, 09/09/2015, entitled ‘Decoder Cube S. To take Canal Plus everywhere’;

• the www.nautile.nc website, undated, but reference is made to 11/07/2018, entitled ‘Canal + launches Cube C’ and informing about the launch of the new decoder for users in French New Caledonia.

• Exhibit 16: printout dated 11/01/2018 of Wikipedia in French with a partial English translation regarding ‘Cube Canal+’ stating ‘during September 2009, the advertising campaign for +Le Cube on television was run by Pauline Lefèvre, miss Weather Forecast of Canal+, who parodies advertisement for make-up products… 165 000 subscribers among 10,2 million subscribers of CANAL+GROUP purchased this subscription.’

• Exhibit 17: copy of internal documents claiming a high number of subscribers between 2014-2016.

• Exhibit 18: witness statements, both dated 24/09/2015, of the opponent’s Products and Services Marketing Director and employee since 2007:

• In the first the director affirms the authenticity of the data enclosed as Exhibit 17 and indicates the number of subscribers who owned various models of decoders branded with the earlier mark in April 2015;

• In the second witness statement, the Marketing Director also states the total number of decoders made until 24/09/2015, which bears the sign .

• Exhibit 19: Copies of articles (paper and online editions) mentioning the decoder ‘The Cube’ (mainly in French with partial translations into English), including:

• Télé satellite numérique, February 2011, stating that ‘Le Cube is the CANAL+ premium device’;

• The Audiovideohd.fr website, 18/03/2011, indicating that Alice in Wonderland was to be broadcasted that night for Canal+ subscribers with the ‘+LE CUBE’ decoder;

• Télé Cable Sat, 23-29/04/2011, an article entitled ‘The recorder decoders’, mentioning ‘+ Le Cube’ and with an insert dedicated to these decoders;

• Echos du Net, 23/05/2012, an article entitled ‘+ Le Cube, soon available for the 1st time with SFR’;

• Geosat, an article entitled ‘CANAL subscription via TNT +LE CUBE decoder’ (the article is not dated but a comment indicates that the date was 30/04/2012);

• Boursier.com, 31/10/2012, an article entitled ‘Canal+: soon to be a ‘triple play’ offer’, in which it is stated that ‘[t]he other offers would include the Canal+ decoder (+LE CUBE)’;

• Les Echos.fr, 30/10/2012, an article entitled ‘Canal+ is thinking about triple play packages’;

• HD motion, 02/09/2013, an article entitled ‘Canal+/Canalsat: drop in hard drive of the +Le Cube TNT/Satellite decoders?’;

• HD motion, 14/10/2013, an article entitled ‘The new interface of the decoder TNT ‘+ Le Cube’ with OTT service, in beta test’.

• Next INpact, 14/03/2014, an article entitled ‘Canal+ intends to broadcast its channels directly by Internet’, stating that: ‘More than five years ago, Canal+ launched +LE CUBE. This HD decoder was above all dedicated to satellite’s customers in order to offer new services, including the new ones. Since then, the decoder evolved and a TNT version has been developed’;

• the Ariase.com website, 06/05/2015, an article stating that ‘Canal+ and Canalsat will provide HD on July 1st’;

• the Adsletfibre.fr website, 06/07/2015, an article entitled ‘CANAL + and Canalsat on sale from 16.90 Euros / month’, in which the decoder ‘+ Le Cube’ is mentioned and featuring a photograph of the decoder, branded with the opponent’s mark;

• HD motion, 07/01/2015, an article entitled ‘Dezeer, now available via Canal’s +Le Cube decoder’;

• Univers Freebox, 28/04/2015, an article entitled ‘Free and Groupe Canal+ end the broadcast of their programs on AliceBox’, in which a press release from Canal + mention that the customer may opt for a freebox;

• Univers Freebox, 30/04/2015, an article entitled ‘New update of the Android app myCanal’ in which the opponent’s mark ‘+LE CUBE’ is mentioned;

• Télé satellite numérique, 19/12/2017, an article mentioning the opponent’s brand and the new decoder: ;

• TNT SAT, printout date 19/12/2017, an article in which the opponent’s decoder branded with the ‘+LE CUBE’ trade mark is mentioned.

• Exhibit 20: Copies of several press articles from 2009, including from Business Wire and the Boursier.com website, showing that the opponent’s set-top box ‘+LE CUBE’ was awarded with the IPTV World Trophy Series for the Best Hybrid Broadcast-lP Video Delivery Solution category in 2009.

• Exhibit 21: Screenshots from the Fuseproject.com website, showing awards granted to the Le Cube S decoder: the Red Dot Product Design Award 2016 (for the best products created every year), the lnternational Design Awards, Gold, 2016 (promoting design visionaries and emerging talent in architecture, interior, product, graphic and fashion design) and the SPARK Award, Gold, 2016.

• Annex 4: Prior decisions from the Opposition Division confirming the enhanced distinctiveness of the earlier trade mark, one Board of Appeal decision, partly in English and French (with partial translations). Prior decisions of the French INPI and from the Court of Appeal of Versailles, both with partial translations. The decisions were issued between 2008 and 2018.

On the basis of the above the Opposition Division concludes that the earlier trade mark has a reputation in France for part of the goods and services for which the opponent has claimed reputation.

Although the opponent did not provide market studies or opinion polls showing directly the public’s perception of the earlier mark, it is clear from the abovementioned evidence that the earlier mark has been subject to a relatively long-standing and intensive use in relation to decoders in Class 9. The majority of the evidence relating to the European Union concerns France, where the use was significant both geographically and quantitatively (see in particular Exhibits 1 and 16-18). In particular, the number of subscribers who owned the opponent’s decoder in April 2015 (Exhibit 18) and the opponent’s marketing efforts suggest that the trade mark is generally known in the relevant market, at the very least in France, where it enjoys a consolidated position.

Thanks to longstanding and successful presence on the market, during which the opponent promoted its decoders under the earlier mark — primarily, through production of new successful models, each more innovative and tech-savvy (Exhibits 4, 15 and 19; for example, the article from the www.clubic.com website, where the new ‘+LE CUBE S’ decoder is mentioned as being the first to make a complete television package available via the internet regardless of the internet provider), but also through advertising campaigns (e.g. Exhibits 2, 5, 7-8, 10-12); promotional campaigns, such as the ‘+LE CUBE’ key rings campaign (Exhibit 14); and marketing activities, such as the Satquiz game (Exhibit 13) — the earlier trade mark has earned a certain level of goodwill amongst the relevant public in relation to decoders.

The novelty and design of the opponent’s decoders has been recognised by various specialised fora (Best Hybrid Broadcast-lP Video Delivery Solution category in 2009, Exhibit 20; the Red Dot Product Design Award 2016; the lnternational Design Awards, Gold, 2016 and SPARK Awards, Gold, 2016, Exhibit 15 — last article from reddot 21, world of design — and Exhibit 21). Furthermore, the opponent’s mark is frequently referred to in relation to decoders in both the specialised and the general press, as can be seen from the press articles (Exhibits 15 and 19).

Bearing in mind the above, it is concluded that the evidence submitted demonstrates that the earlier mark enjoyed, before the date of filing of the contested application, an at least average degree of reputation for decoders in Class 9 amongst the relevant public in France. Although the evidence does not refer to all the countries of the relevant territory, according to case-law, an EU trade mark must be known by a significant part of the public concerned by the products or services covered by that trade mark, in a substantial part of the territory of the EU (06/10/2009, C-301/07, Pago, EU:C:2009:611). Therefore, in the Opposition Division’s view, reputation established in France is sufficient to conclude that the earlier mark enjoyed an average degree of reputation for decoders in the European Union.

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, for example, 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.

It is to be pointed out, that on 03/02/2020, after expiry of the substantiation time limit, the opponent submitted additional evidence. This additional evidence consists of six decisions of the Opposition Division (three in French with partial translation into English and three in English), some of which were already filed in the first round of evidence. Moreover, these documents concern the opponent’s claims as to the distinctiveness (inherent and enhanced) of + LE CUBE. As the Opposition Division acknowledges an average degree of distinctive character of the earlier mark and also an average degree of reputation, this additional evidence would have no impact on the outcome and, therefore, the Opposition Division does not deem it necessary to re-open the proceedings.

b) The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a ground based on Article 8(5) EUTMR, established for only part of the relevant public of the European Union is sufficient to reject the contested application.

The reputation of the earlier mark has been established mainly on the basis of the evidence referring to the French market. Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the public in France.

The relevant public will perceive the word ‘CUBE’ of the earlier mark as a noun referring to a solid object having six plane square faces in which the angle between two adjacent sides is a right angle. Although some of the relevant goods in Class 9 can be cube shaped (05/02/2016, R 1657/2015-2, SCANCUBE), this is generally not the shape of the goods concerned, contrary to the applicant´s argument, who considers the word ‘cube’ to be weakly or even non-distinctive for the relevant goods. However, the Opposition Division considers the word ‘CUBE’ to be inherently distinctive for the relevant goods to an average degree (13/08/2018, R 2187/2017-4, CamCube / LE CUBE (fig.), § 22; 24/10/2019, R 2456/2018-4, gymcube (fig.) / +LE CUBE (fig.), § 22).

The word ‘LE’ of the earlier mark is a French article introducing the masculine noun which follows it and is of limited distinctiveness (24/10/2019, R 2456/2018-4, gymcube (fig.) / +LE CUBE (fig.), § 24).

The ‘+’ symbol of the earlier mark is visually co-dominant with the verbal elements, but it is inherently weakly distinctive for the goods, since it is a purely laudatory, promotional message denoting a particular positive or appealing quality or function (12/12/2014, T-591/13, News+, EU:T:2014:1074, § 29; 24/10/2019, R 2456/2018-4, gymcube (fig.) / +LE CUBE (fig.), § 24). The fact that this element is placed against a black square does not change this finding (24/11/2016, R 1824/2015-2, Bild+ (fig.) / Device of a white cross within a black square (fig.), § 42-49). The use of backgrounds such as squares is quite common (15/12/2009, T-476/08, Best Buy, EU:T:2009:508, § 27; 27/10/2016, T-37/16, CAFFÈ NERO, EU:T:2016:634, § 42).

The stylisation of the earlier sign is distinctive to at most a low degree. When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore, the relevant public will perceive the verbal element ‘CUBE’ of the earlier mark as the main indicator of commercial origin of the goods.

The contested sign is composed of the verbal element ‘KUBE’ and the figurative element of a white cube with six dots. Although the word ‘kube’ as such is not found in the French Larousse dictionary, the relevant public will understand the foreign word as it is very close to the equivalent word in the official language in the relevant territory, namely ‘cube’. Furthermore, the concept of a cube is confirmed by the figurative element thereof comprising also blue dots, that may be perceived by part of the public as forming the letter ´K´. Both elements, the verbal and figurative, are distinctive for the relevant goods and services as these are not descriptive of the characteristics or in any other manner weak/non-distinctive of the goods and services. The background of the contested sign serves decorative purposes and is non-distinctive.

The contested sign has no element that could be considered clearly more dominant than other elements.

Visually and aurally, the signs coincide in the sequence of letters ‘*ube’. Although the first letter differs visually between ‘c’ of the earlier and ‘k’ in the contested sign, aurally this does not make any difference in the pronunciation. These letters when positioned at the beginning of the word have the same sound.

The signs differ in the ‘+’ element and the word ‘le’ of the earlier sign, both of which have a limited distinctiveness, the distinctive figurative element of the white cube of the contested sign as well as in the further figurative elements of the signs. Part of the public will also recognize the dotted letter ‘K’ in the white cube, but would tend not to pronounce it because it will be linked to the first letter of KUBE.

Consequently, and considering also the higher impact of the word elements as well as the distinctiveness of the elements where the coincidences and differences lie, the signs are visually similar to a lower than average degree and aurally slightly higher than average.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to ‘Cube’, but the earlier sign also includes the ‘+’, the signs are conceptually similar to a high degree.

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

c) The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar 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 degree of similarity between the signs

As stated above, the signs have been found to be similar in all three aspects of the comparison.

The degree of the earlier mark’s distinctive character

The earlier trade mark has no direct meaning in relation to the opponent’s goods for which reputation has been proven (i.e. decoders) and, therefore, its inherent distinctiveness in relation to these goods is normal.

The strength of the earlier mark’s reputation

The earlier mark has an average degree of reputation in relation to decoders in Class 9.

The nature of the goods and the relevant public

As regards the opponent’s goods for which reputation has been proven, a ‘decoder’ is a code breaking tool that is used to decode encryptions of all kinds. It is a device that converts coded data back into their original form. It typically concerns a device used to decode messages or signals sent in code, for example the television signals of a satellite (PCMag Encyclopedia). Such a ‘decoder’ or ‘setup box’ through which the television signals are received breaks these encoded signals down before presenting them in a format that is displayable on screen. In today’s market reality, many households have a television or satellite decoder which in turn is connected to a modem and to which not only a television set but all types of computers and other devices are — or can be — connected, including through Wifi. Indeed, this is the case of the opponent’s decoders (see Exhibit 1.3). Video and audio content is not only displayed on television sets, but may also be displayed on PCs, laptops, smartphones and virtually any other device that has a screen. The opponent is a broadcasting company, which provides access to different types of content. The content may vary from a wide range including but not limited to entertainment, sport, cultural, learning and instructional content.

The applicant argues that it is a provider of consulting, leadership training and event organization services that has been operating in these fields for fifteen years. KUBE would be a format aiming at acceleration of the managerial development for managers and high potentials through an immersive experience and interaction of the trainee with a complex, imaginary business case. Consequently, according to the applicant, the parties operate in different sectors and target different clients. The Opposition Division notes that the goods and services must be based on the wording indicated in the respective lists of goods and services. Any actual or intended use not stipulated in the list of goods and services applied for is not relevant for the analysis of the Opposition Division. Therefore, the applicant’s arguments must be dismissed as irrelevant for the purposes of the present assessment.

The contested goods in Class 9 are software or apparatus and instruments which include audio-visual data apparatus and show, therefore, a certain connection with the opponent’s decoders in Class 9. The contested goods may include IT products that can be produced and marketed by the same companies, share the same distribution channels and sales outlets, and they can also be used together. The fact that the applicant excluded decoders from the list of goods, does not exclude certain connections between the goods as argued above.

The contested goods and the opponent’s decoders belong to the same market sector. They may be produced by the same industries, and their relevant consumers overlap substantially. It should be recalled that Article 8(5) EUTMR applies also when the goods are identical or similar (09/01/2003, C-292/00, Davidoff, EU:C:2003:9).

It is quite common for providers of software and/or IT equipment to also provide manuals as well as instructional and teaching materials of Class 16 in relation to their goods. This can be corroborated by the evidence filed by the opponent, namely in Exhibit 1.3 and 12. Consequently, there is a certain connection also between the opponent´s reputed goods and the contested goods in Class 16. Moreover, as stated above, it is nowadays very common to use different channels for conveying knowledge or visualisation of instructional and teaching materials. The opponent’s goods, especially taking into account the opponent’s sphere of business, are means for providing access to various content broadcasted by the opponents, and so at least partially targeting the same public.

Similar to the contested goods in Class 9, the contested goods in Class 28 may be similar to the opponent’s decoders as they may need/use the decoders for the conversion of sound and image data. Moreover, nowadays computer game programs may be offered through decoders under the same brand (especially those that are downloadable from the internet). They are both IT products that can be produced and marketed by the same IT companies, share the same distribution channels and sales outlets, and they can also be used together. The fact that the applicant excluded decoders from the list of goods, does not exclude certain similarities between the goods as argued above. Furthermore the electronic games and smart toys are/may be interactive systems with the use of a remote control, which may also be used by/through a decoder.

As regards the contested services in Class 38, although the applicant excludes the rental of aerials and dish aerials, it is undeniable that providers of telecommunication services may and usually do provide related equipment such as decoders. Consequently, the contested services and the opponent’s decoders coincide in providers, distribution channels, outlet centres and relevant public.

The contested services in Class 41 are related to education, entertainment and sport services and also have certain points of contact with the opponent’s decoders. As seen from the evidence submitted by the opponent, the reputed goods are intrinsically linked to the wider range of services provided by the opponent and aimed at delivering to the public different content, such as entertainment content (shows, films, series, etc.), sports programmes, etc. It is the provider who finally decides what programmes of education, entertainment, cultural, sports activities will be accessed by means of using the relevant opponent´s goods. Moreover, it is usual that the broadcasting companies act as broadcasters and producers that record and produce their own entertainment content, such as shows, films, series, etc. which form part of their channels, which can be broadcast through decoders. Therefore, there is a connection between these. They may be provided by the same companies, share distribution channels and relevant public (24/10/2019, R 2456/2018-4, gymcube (fig.) / +LE CUBE (fig.) §17).

Furthermore, as pointed out by the opponent, advertising and promotional offers are very often broadcast on television channels and content; TV advertising also includes TV sponsorship and product placement. In the light of the above findings it is likely that consumers who encounter the contested trade mark in the context of Class 35 advertising, marketing and promotional services (none of the aforesaid services relating to the retailing and wholesaling of decoders, the retailing of aerials, subscriptions to audiovisual programmes and the arranging of subscriptions to a television channel) will be prompted to establish a link to the opponent´s reputed mark.

A connection cannot be denied also between the contested services in Class 42 (scientific, technological, IT services) and the opponent’s decoders as can be seen from the evidence attached as Exhibit 15 - the opponent does provide new generation devices, which means that there is a technological service behind it. Technology services are professional services which facilitate the use of technology by enterprises and end users, which is the case of the decoder. Furthermore, science and technology is closely interrelated with the IT services, which means that the research of better and faster decoders are also closely related to these products. At this point, the Opposition Division finds it useful to recall that the fact that the goods and services designated by the marks at issue belong to distant sectors of trade is not, in itself, sufficient to exclude the possibility of the existence of a link. The specific reputation of the earlier mark and the degree of similarity between the marks could make it possible for the image of the reputed mark to be transferred to the contested mark notwithstanding the distance between the relevant market sectors. In this respect, account is to be taken of the fact that of the image of the opponent´s brand is a result of providing technological solutions (as reflected e.g. by the opponent´s awards), the opponent being linked to design visionaries. The opponent has filed evidence in which it promotes new decoders on the market, showing the continuous technology and scientific effort to offer the latest technology available. This is corroborated by the Exhibits 20 and 21 in which the opponent, taking into account the relevant public’s needs, works to offer new devices which include design and technology. Indeed, as maintained by the opponent, the opponent´s business and the technological and engineering fields are nowadays interconnected and it is common in the opponent´s industry for companies to provide a full package of integrated solutions.

However, the Opposition Division is of the view that establishing a link is less likely with respect to the remaining contested services in Class 35. The contested services in Class 35 are expected to be provided by companies specialised in business administration, business management and assistance, which are focused mainly on these activities and do not usually run other businesses. These services and the opponent´s reputed goods are of a different nature, have a different purpose, have completely divergent distribution channels, are targeted at consumers with different needs and are offered by different companies/suppliers. Furthermore, they clearly belong to different areas of the economy. These services are too far-off and do not have sufficient points of contact with the opponent’s decoders there is no market reality that indicates a connection that the relevant public might perceive.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that, when encountering the contested mark, the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. It is not altogether inconceivable that the relevant public could make a link between them and be led to transfer the image and the values of the earlier mark to the goods bearing the mark applied for, due to the identical concept of the ‘cube’ and in relation to the Classes 9, 16, 28, 38, 41 and 42 as well as advertising, marketing and promotional services; none of the aforesaid services relating to the retailing and wholesaling of decoders, the retailing of aerials, subscriptions to audiovisual programmes and the arranging of subscriptions to a television channel in Class 35.

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 argues that the applicant intends to take unfair advantage of the distinctiveness and repute of the opponent’s sign. It argues that due to the similarity of the signs, it applicant is misappropriating the attractive powers and advertising value, exploiting its reputation and prestige. Due to the large number of subscriptions, the numerous press articles which proves its success with the public, the applicant clearly attempts to benefit thereof. This would likely cause detriment to, or take unfair advantage of, the distinctive character or repute of the earlier trade mark. Furthermore, considering that there is a link or association between the signs involved, the above mentioned is indisputable.

In other words, the opponent claims that it could not have been fortuitous since the applicant was obviously aware of the use of the earlier trade mark . Consequently, there was a clear attempt to benefit from its power of attraction, reputation and prestige to exploit without paying any financial compensation, the advertisements paid by the opponent. Based on the aforementioned, the 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 and repute of the earlier trade mark.

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, §40).

The earlier mark has built up a reputation among the relevant public in France. As evidence by the evidence filed, the opponent promotes its decoders under the sign and they are associated by the public and various specialised for a with an image of quality and innovation.

Taking into account that the earlier mark is inherently distinctive and that the opponent has built up certain goodwill and an average degree of reputation in its earlier mark, and that the signs are similar to an extent which is not insignificant, it is concluded that consumers of the contested goods and services will make a connection between the marks – an association that will produce a commercial benefit for the applicant.

There is a probability that the use of the mark applied for may lead to free-riding by taking unfair advantage of the well-established reputation of the earlier mark, efforts and investments undertaken by the opponent to achieve that reputation without paying any financial compensation and without the need of incurring similar investments on its own. The contested sign could take unfair advantage of the image of the earlier trade mark and the message conveyed by it, that is that the contested goods and services have similar characteristics to those that are branded under the opponent’s mark.

Based on the aforementioned, the Opposition Division concludes that, from the perspective of the relevant public in France, the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark. Given that unfair advantage established for only part of the relevant public of the European Union is sufficient to reject the contested application, as explained above, there is no need to analyse the remaining part of the public.

e) Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR insofar as it is directed against all the contested goods and services in Classes 9, 16, 28, 38, 41 and 42 as well as against advertising, marketing and promotional services; none of the aforesaid services relating to the retailing and wholesaling of decoders, the retailing of aerials, subscriptions to audiovisual programmes and the arranging of subscriptions to a television channel in Class 35.

The opposition is not successful insofar as the remaining services of Class 35 are concerned based on the ground of Article 8(5) EUTMR. Consequently the Opposition Division will continue with the examination of this opposition 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.

a) The goods and services

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

Class 9: Decoders; Remote controls; antennas satellite dishes.

Class 35: Retailing and wholesaling of set-top boxes; retail sale of aerials; arranging subscriptions to audiovisual programmes; arranging subscriptions to a television channel.

Class 38: Television communication; transmission of images and videos; television broadcasting; broadcasting of programmes via satellite, via cable, via computer networks (in particular via the internet), and via radio waves; audiovisual and cinematographic broadcasting, whether or not for interactive purposes; rental of aerials and satellite dishes; transmission of programmes and selection of television channels.

Class 41: Rental of decoders.

Class 42: Online downloading of films and other audiovisual programmes.

There was no link found under Article 8(5) EUTMR for the following services, consequently, the Opposition Division will proceed with the comparison of these:

Class 35: Business assistance, management and administrative services; business analysis, research and information; none of the aforesaid services relating to the retailing and wholesaling of decoders, the retailing of aerials, subscriptions to audiovisual programmes and the arranging of subscriptions to a television channel.

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.

Although the applicant limited the services in Class 35, the Opposition Division clarifies that the services may still be considered similar since they may coincide in some of the trade mark relevant factors numerated above.

All contested services are at least similar to a low degree to the opponent’s arranging subscriptions to audiovisual programmes; arranging subscriptions to a television channel.

The contested services are aimed at supporting or helping other businesses to do or improve business. The opponent´s services refer to a business model, which does not imply sale directly, but where a customer is offered a periodic subscription to use or access to a service and are nowadays used by many businesses and websites. Consequently, the broad categories of the contested business assistance, management and administrative services; business analysis, research and information, and despite the limitation of the applicant, have at least a similar purpose, target the same professionals, and coincide in providers and distribution channels with the opponent´s services.

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 at least similar to a low degree are directed at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, or terms and conditions of the services purchased.

c) The signs

The signs have already been compared 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.

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.

As analysed in the first part of the decision, the Opposition Division concluded that the earlier sign has reputation only regarding decoders in Class 9.

Consequently, the assessment of the distinctiveness in relation to the relevant services will rest on the earlier mark´s distinctiveness per se, which is normal.

e) Global assessment

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 23).

The services are found to be similar to at least a low degree. The earlier mark has a normal degree of inherent distinctiveness for the relevant services. The signs are found to be visual similar to a lower than average degree, aurally to a slightly higher than average degree and conceptually to a high degree.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, 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). As both signs convey the concept of the cube, although written differently, it is possible that the relevant consumer, even with a high degree of attention, considers there is another service line which are linked to the same undertaking, even considering only lowly similar services.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 8 699 291. It follows that the contested trade mark must be rejected for all the contested goods and services.

COSTS

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

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

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

The Opposition Division

Denitza STOYANOVA-VALCHANOVA

Astrid Victoria WÄBER

Reiner SARAPOGLU

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.