OPPOSITION No B 3 071 726

Groupe Canal+, S.A. à directoire et conseil de surveillance, 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

Plus4U a.s., V Kapslovně 2767/2, 130 00 Praha 3, Czech Republic (applicant), represented by Jarmila Javoříková, Slunečná 4566, 760 05 Zlín, Czech Republic (professional representative).

On 22/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 071 726 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 939 111 for the word mark ‘+4U’. The opposition is based on French trade mark registration No 3 636 873 and international trade mark registration No 1 025 864 designating the European Union, both for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration No 1 025 864 designating the European Union.

a) The goods and services

The goods and services of the earlier mark belong to Classes 9, 16, 25, 35, 38, 41 and 42. The complete list of those goods and services (not reproduced here because of its length) can be found in the notice of opposition, accessible through the Office website https://euipo.europa.eu.

The contested goods and services are the following:

Class 9: Computers; wearable computers; notebook computers; software; computer networks; computer information systems; electronic codes; electronic internet systems; computer applications; tablets and cell phones; monitors; printers; keyboards; computer mouses; mains chargers; modems; servers; touchscreens; hard discs; electronic components; spare parts for computers; audio-video apparatus; television apparatus; projectors; telecommunication apparatus; cell phones; optical apparatus; photographic and cinematographic equipment; scientific instrumentation; electronic storage media; peripherals adapted for use with computers; e-books; electronic magazines; downloadable electronic newspapers; mobile apps; communication software; apparatus for recording images; sound recording apparatus; apparatus for recording data; data processing apparatus; electric control apparatus; electronic control systems; interactive computer software; computer programs [downloadable software]; telecommunications software; software for mobile phones; computer e-commerce software; portable telecommunications apparatus; application software for social networking services via internet; computer software platforms for social networks.

Class 35: Advertising; marketing services; internet marketing; demonstration of goods; advertising; business investigation; business administration; automated data processing; electronic data processing; consultancy regarding business organisation and business economics; commercial management; computerized file management; personnel services; computerised accounting; business management services relating to electronic commerce; retail services in relation to domestic electronic equipment; sale of telecommunications equipment; sale of computer equipment; sale of computer software; sale of computing equipment; sale of telecommunications accessories; systemization of information into computer databases; business advisory and information services.

Class 38: Telecommunication services; communications by computer terminals - electronic transmission of data; operating telecommunications portals; rental of telecommunication facilities; transmission of electronic mail; internet telephone services; teleconferences; video conferencing; sharing of data via internet networks; wireless broadcasting; television broadcasting; cable television broadcasting; provision of telecommunication connections to computer networks; providing of information and consultancy relating to telecommunications; communications by cellular phones; telecommunications consultancy; providing internet chatrooms; rental of cellular telephones.

Class 41: Publishing operations; electronic desktop publishing; training activities; lecturing; training; language tuition; translation and interpretation; cultural activities; entertainment; gambling; gambling via the internet; sporting activities; sports club services; coaching; photography; artist production; production of cinematographic films; production of music; agency services for artists/performers; operating electronic internet portals relating to the providing of training, culture, entertainment and sport; production of audio/visual presentations.

Class 42: Computer programming; research and development of computer software; updating of computer software; copying of computer software; installation of software; maintenance of software; testing of computer software; programming of telecommunications software; computer analysis; computer graphics services; creating and maintaining websites; hosting web sites; computer rental; rental of software; industrial design; graphic design; consultancy in the field of computers; engineering services; quality control; design planning; technical research; design of information systems; design and writing of computer software; telecommunications technology consultancy; information technology [IT] consultancy.

Class 45: On-line social networking services; dating services provided through social networking; online social networking services accessible by means of downloadable mobile applications; dating services; personal introduction services; legal services; litigation services; domain names (registration of -) [legal services]; marriage guidance counselling; rental of clothing; security services for the protection of property; security services for the protection of individuals.

Some of the contested goods and services are identical or similar to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 goods and services assumed to be identical are directed at the public at large and/or 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, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

	+4U
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 symbol ‘+’, present in both signs, may be associated with the mathematical sign for addition or augmentation corresponding to the term ‘plus’ and will be perceived in relation to the goods and services in question as a laudatory or augmenting element in that it generally indicates a superior value or quantity (03/03/2010, T‑321/07, A+, EU:T:2010:64, § 41-42; 12/12/2014, T‑591/13, News+, EU:T:2014:1074, § 29). In other words, it conveys an indefinite yet positive message of ‘something more’ and is therefore laudatory. Furthermore, it is frequently used in the course of trade.

This element, ‘+’, will be pronounced ‘PLUS’ or other equivalent terms in other languages of the relevant territory. However, the term ‘PLUS’ merely informs the public that the goods and services concerned are of better quality or have something extra with respect to the normal standards of goods and services on the market. When pronouncing ‘PLUS’, the relevant consumers will perceive it as a purely laudatory, promotional message denoting — in general — a particular positive or appealing quality or function, and therefore it has an extremely low degree of distinctiveness for all the relevant goods and services (see, by analogy 15/11/2007, T‑38/04, Sunplus, EU:T:2007:341, § 42; 03/03/2010, T‑321/07, A+, EU:T:2010:64, § 41, 42; 25/05/2017, 1441/2016‑4, STAR PLUS / PLUS, § 17). Consequently, the term ‘PLUS’ cannot in any way fulfil the function of an indicator of origin. This is also applicable to the symbol ‘+’. Therefore, such a symbol (‘+’) or term (‘PLUS’) must be kept available for use by other traders. Accordingly, the element ‘+’ lacks inherent distinctiveness.

The evidence of reputation of the earlier mark provided by the opponent, namely some of the surveys, shows that the sign as a whole may also be associated with the Red Cross, the medical and/or pharmacy sectors, Switzerland, a religion, etc. Although the territory where these surveys were carried out is France, consumers in other countries of the European Union may also perceive these associations. The cross shape as such is a simple sign and, moreover, it is a commonplace symbol that consumers encounter in a wide range of contexts. Hence, the cross shape alone is unlikely to be perceived as an indication of commercial origin (15/02/2010, R 1606/2008‑4, Green Cross (FIGURATIVE MARK), § 12).

In the contested sign, which has no particular graphic depiction of the symbol ‘+’, the only possible meaning is related to the mathematical symbol. Since this is the only meaning where the signs may coincide, the most advantageous scenario for the opponent is when the mathematical symbol is perceived in both signs, because this also leads to aural and conceptual similarities. Therefore, the Opposition Division will consider this part of the public in the analysis below. The black background of the earlier mark is a square, considered as a simple geometric shape of a purely decorative nature, which in itself is hardly distinctive, if at all. However, to some extent, there is a minimal degree of distinctiveness arising out of the combination of the simple black shape and the white cross-like symbol.

The earlier mark has no element that could be considered clearly more dominant than other elements.

The contested sign is a word mark consisting of an alphanumeric combination, ‘+4U’, presented as a single meaningless expression. However, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). Therefore, it is highly likely that the English-speaking part of the public, as well as consumers who have a good command of English although it is not their native language, will break the contested sign down into the elements ‘+’ and ‘4U’. They will perceive the symbol ‘+’ as having the meaning ‘plus’, as indicated above, and the element ‘4U’ as the expression ‘for you’, since the use of numbers or single letters instead of aurally identical words has already become commonplace in informal, business and advertising language (19/12/2017, R 1610/2017‑4, 4U, § 15; 12/06/2015, R 2900/2014‑2, TALK4FUN (FIG. MARK), § 20). The elements ‘+’ (plus) and ‘4U’ (‘for you’) as a whole convey a laudatory promotional message, namely that the goods and services are tailor-made or designed especially for the consumer, and its distinctiveness is therefore seen as low. The meaningful expression ‘plus for you’ alludes to the idea that something more is offered taking into account the particular needs of the consumer. The remaining part of the public will not perceive the abovementioned meaning of the element ‘4U’ and its distinctiveness is therefore normal.

Considering all the above, the Opposition Division will continue with the assessment of similarity focusing on the part of the public that will perceive the meanings indicated above in the signs, namely the English-speaking consumers who will also perceive the mathematical symbol ‘+’ in the earlier mark. Indeed, this is the most advantageous scenario for the opponent because the additional and different element ‘4U’ of the contested sign has a low degree of distinctiveness for this part of the relevant public.

Visually, the signs coincide in the symbol ‘+’, which lacks distinctiveness per se. However, in the earlier mark, inversely to the contested sign, the symbol is white and located in the centre of a black square. The signs also differ in the alphanumeric element ‘4U’ of the contested sign. Therefore, visually, the signs are not similar.

Aurally, as indicated above, the relevant consumers will pronounce the earlier mark as ‘plus’ and the contested mark as ‘plus for you’. Taking into account that the beginning of the contested sign will be pronounced identically to the earlier mark and the difference is created by the weak element ‘4U’ (‘for you’) at the end of the contested sign, the signs are considered aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be associated with the non-distinctive concept of ‘plus’, the signs are conceptually not similar.

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

d) Distinctiveness of the earlier mark

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

According to the opponent, the earlier trade mark has a reputation in the European Union in connection with numerous goods and services in Classes 9, 35, 38, 41 and 42. The complete list of those goods and services can be found in the notice of opposition, accessible through the Office website https://euipo.europa.eu.

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).

On 10/04/2019, the opponent submitted evidence to support this claim. The opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, but gave no explanation or justified interest in keeping the documents in question confidential, as required by Article 114(4) EUTMR. The Office therefore does not consider the documents in question to be confidential. However, in relation to this decision, the Opposition Division will describe the evidence in general terms without disclosing sensitive commercial information. The evidence consists of the following documents:

 Annex 3: Extract dated 09/04/2019 from Wikipedia, in French with a partial translation. This document is about the different versions of the ‘Cube Canal+’, a ‘multimedia box’. The last modification of this article was made on 07/04/2018.

 Annex 4: Extracts from Wikipedia, in English and in French with a partial translation, about the ‘Canal+ Group’ (the opponent) and ‘Canal+’ (the television channel). The information is mainly related to the French market. However, it can be seen that ‘Canal+’ was launched in new markets.

 Annex 5: Extracts dated 09/04/2019 from Facebook, Twitter and Instagram pages. They show 2 976 061 followers on Facebook, more than 3 million on Twitter and more than 224 000 on Instagram and depict the following signs: , , , , , . This annex also includes a press release ‘Vivendi’, dated 17/05/2018, which states the following about ‘Canal+ Group’: ‘continuation of recovery with a total of 15.3 million subscribers (+620 000 year-on-year)’.

 Annex 6: Documents showing use of the signs and/or for the application to access entertainment services (TV channel, broadcasting of various TV programmes, etc.) provided by the opponent. Press articles from the iTunes website showing the use of the sign in connection with a mobile application launched in 2012 for media and entertainment services (mainly a television channel). The extracts are dated in 2015-2018. The application, available via all communication devices (smartphones, tablets, PCs, etc.), makes it possible to watch on demand all the programmes offered by the opponent. According to the opponent, ‘this application has been voted best interface and best digital communication device during the 5th edition of the SOCIAL MEDIA AWARDS ceremony in 2016’ and ‘in a spirit of innovation and modernity, CANAL + has set up a partnership with Apple to broadcast its programmes via the Apple TV 4k’. The excerpts also show between 5 and 10 million downloads of the application from the App Store and a review stating that the application has become an ‘Editor’s Choice’ (according to the opponent, ‘this badge is one of the most prestigious awards in the App Store and rewards the best “apps” on the giant’s apple platform’).

 Annex 7: Extracts from the French platform ‘Dailymotion’ and contents from YouTube channels broadcasting news and contents of ‘CANAL+’ online, where the following signs appear: and . This annex also includes the Annual Report 2015 of the ‘Canal+ Group’, in French with partial translations in English, informing of the turnover and extent of the subscription portfolio (9 463 million in France and 5 886 million outside of France) at the end of December 2014. It can be seen that ‘Canal+’ is a pay TV leader and also a leader in the publication of premium and theme channels as well as the distribution of pay TV offerings. In total, nearly one in four French households subscribe to a ‘Canal+ Group’ offer. The ‘international’ subscriber portfolio shows 2.1 million subscriptions in Poland, 1.6 million in Africa, 0.8 million in Vietnam and 0.5 million ‘overseas’.

 Annex 8: Documents related to a collaboration between 2008 and 2010 with the industrial professional design and branding firm ‘Fuseproject’ to develop a set-top box.

 Annex 9: Documents showing ‘multimedia boxes’ and other decoders providing various IT services and allowing access to TV channels and multiple telecommunication and entertainment services, such as movie broadcasting. The evidence shows that this multimedia box has been awarded the IPTV World Series Trophy in 2009 in the category ‘Best Hybrid Broadcast IP Video Delivery Solution’. The sign is affixed on the ‘multimedia box’, called ‘LE CUBE’, as follows: , .

 Annex 10: Article dated 17/05/2011, published on the internet website www.alloforfait.fr, explaining that the Canal + group decided to rename almost all of its channels to more easily identify the group’s channels. Thus, all will have a ‘+’ at the end of their name.

 Annex 11: Copies of EU, French and international registrations owned by the opponent, including signs such as , , , , , , , , , , , , , , , , , , , , , , , , , , , , and some screenshots of Twitter, the opponent’s French websites (CANAL Boutique, myCANAL, Teletoonplus), Télé-Loisirs.fr and other websites such as Wikipedia.fr and Facebook showing use of these signs. The screen shots are undated except for the Wikipedia screenshots dated 2016.

 Annex 12: Screen captures of trailers presented by the opponent.

 Annex 13: Magazines edited by the opponent, dated 2011 and 2012, and sent to its subscribers showing the sign on the front page. In the magazines dated 2013 and 2014, the sign shown on the front page is .

 Annex 14: Some advertising material released in France in 2014. The signs shown in these documents are, inter alia, the following:

, , , , .

 Annex 15: Press release, dated 2018, informing that the group ‘Canal+’ launched a TV channel of classical music together with music label ‘Deutsche Grammophon’. The name of the channel is ‘Deutsche Grammophon +’.

 Annex 16: Pictures of a pop-up store operated by the opponent at La Défense, Paris, France and of the opponent’s store in Velizy, near Paris. In both cases, the sign is used by itself. These documents are dated 2014 and 2015.

 Annex 17: Survey carried out in French by the company Corsearch / Opened Mind – Pôle Etudes et Conseil Marketing, dated 2014, evaluating the association between the sign or ‘+’ and the channel ‘CANAL+’ in France. The sample size was 200 persons. The survey results show that 14 % of the respondents were subscribers of ‘Canal+’ and 11 % of the respondents spontaneously associated the sign with the opponent, before any other entity, and that 10 % of the respondents also spontaneously associated the sign with ‘Canal+’ (21 % with the Red Cross, 19 % with Switzerland and 12 % with pharmacies). When asked specifically about a trade mark, 10 % of the respondents associated the symbol ‘+’ with ‘Canal+’ and 11 % identified the sign with ‘Canal+’.

 Annex 18: Survey, dated 23/01/2007, carried out by TNS Sofres, which, according to the opponent, is a French polling company founded in 1963 and now one of the leading marketing and opinion research companies in France. This survey evaluates the association between the sign or ‘+’ and the opponent in France (sample of 488 persons) and shows that, spontaneously, only 35 % named at least one mark with the logo and 61 % of this subgroup identified it as a trade mark of ‘Canal+’, 34 % named at least one mark with the logo and 61 % of this subgroup identified it as a trade mark of ‘Canal+’, 52 % named at least one mark with the logo and 88 % of this subgroup identified it as a trade mark of ‘Canal+’, 53 % named at least one mark with the logo and 88 % of this subgroup identified it as a trade mark of ‘Canal+’. When the respondents were assisted and also shown three other trade marks (Hachette, FNAC and Renault), the results were the following:

.

 Annex 19: Survey, dated 2006, evaluating the associations brought to mind by the sign ‘+’ and the term ‘PLUS’ in France (sample of 1002 individuals). 4 % of the respondents cited ‘Canal+’. When asked specifically about a trade mark, 10 % of the respondents associated the sign ‘+’ and the term ‘PLUS’ with ‘Canal+’.

 Annex 20: Survey, dated May 2017, evaluating the association between the signs , ‘+’ and ‘PLUS’ and the opponent in France. Three matched samples of individuals were selected, one for each sign. 4 % of the interviewees associated the sign , without any assistance, with ‘Canal+’. When asked specifically about one group or one brand, 6 % associated the sign with ‘Canal+’ and 19 % associated the term ‘PLUS’ with ‘Canal+’. 18 % of the respondents related the sign to the TV/audiovisual sector. When aided (15 marks were presented), 22 % of the respondents associated it with ‘Canal+’.

 Annex 21: Opposition decisions rendered in 2014, 2015, 2016, 2017 and 2019 by the French office stating that the ‘device trade mark “+” has a high distinctiveness’ to designate a television channel and the services related thereto.

 Annex 22: Screen shots from a video available on YouTube, dated 2014, showing use of the ‘+’ sign during a one-man show by Kyan Khojandi for the opponent’s 30th anniversary.

 Annex 23: Screen shots of the TV programme ‘Le Gros Journal’, broadcast on Canal+ on 05/09/2016 and presented by Mouloud Achour. The ‘+’ sign is highlighted on the set.

 Annex 24: Extracts from the website www.mycanal.fr, which centralises all the opponent’s content.

 Annex 25: Booklet dated 2015 related to the opponent’s activities in several European Union countries (other than France), in particular in Belgium, Spain and Poland. According to the opponent, Poland is the Group’s second largest market after France, with 2.1 million subscribers in 2014. NC+ is 51 % owned by the ‘Canal+ Group’.

Having examined the material listed above, it appears that the earlier mark is used alone as registered, for example on the ‘multimedia box’ called ‘LE CUBE’ (annex 9), in relation to mobile applications (annex 6) and in the pop-up stores (annex 16). The sign is also used together with many other descriptive elements such as ‘MAGAZINE’, ‘CANAL’, ‘CINE’, ‘SPORT’ and ‘TENNIS’, for example to promote a wide range of TV channels. The survey dated 2014 (annex 17) shows that 14 % of the respondents are subscribers to Canal+ and 10 % of French respondents spontaneously associated the sign with the opponent. It is also significant that, in the 2007 survey (annex 18), 53 % named at least one mark with the invented logo and 88 % of this subgroup identified it as a trade mark of ‘Canal+’. The survey dated 2006 (annex 19) shows that, when asked for a trade mark, 10 % of the respondents associated the symbol ‘+’ and the term ‘PLUS’ with ‘Canal+’. The figures resulting from the survey dated 2017 (annex 20) are not as high, as only 4 % of the interviewees associated the sign with ‘Canal+. However, when aided, 22 % of the sample associated this sign with ‘Canal+’. Other documents, such as opposition decisions rendered in 2014, 2015 and 2016 by the French office, state that the ‘device trade mark “+” has a high distinctiveness’ to designate a television channel and the services related thereto.

Considering what has been stated above in section c) of this decision, the inherent distinctiveness of the earlier mark, despite its figurative specificities, is still minimal. However, the earlier trade mark in combination with its graphical features has acquired enhanced distinctiveness through its use on the French market and has a certain reputation for a television channel and the services related thereto in Classes 38 and 41 as well as for apparatus and instruments for television programme selection and programming in Class 9.

e) Global assessment, other arguments and conclusion

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

The goods and services, assumed to be identical, are directed at the public at large and/or at business customers whose degree of attentiveness may vary from average to high. The signs are visually and conceptually not similar and aurally similar to a low degree. Although the opponent has demonstrated that the earlier mark, which is inherently minimally distinctive, has acquired enhanced distinctiveness through use, this is considered insufficient to create a likelihood of confusion because the coincidence is in an element which, per se, is non-distinctive. The minimal inherent distinctiveness of the earlier mark arises only because of the combination of the simple black shape and the white cross, which is not present as such in the contested sign. The enhanced distinctiveness is due to an intensive use of the earlier mark as registered, that is, also taking into account the figurative aspects of the sign, namely the black square and specific representation of the ‘+’ as a white cross, which are not present as such in the contested sign.

For reasons of procedural economy, it was assumed that all the goods and services were identical, as this assumption cannot change the outcome of the present assessment, because even their identity is not sufficient to lead to a likelihood of confusion on the part of the public after having taken into account all the other factors.

Therefore, the opposition must be rejected as far as this ground is concerned. The absence of a likelihood of confusion applies equally to the part of the public for which the earlier mark as a whole may convey a concept other than the mathematical symbol. This is because that part of the public will perceive the signs as being even less similar. For these consumers, the signs are not aurally or conceptually similar.

The opponent has also based its opposition on French trade mark registration No 3 636 873 for the figurative mark . For this mark, even in a scenario of identical goods and services, the outcome cannot be different with respect to the goods and services for which the opposition has already been rejected, because the perception of French consumers has already been taken into account by examining the likelihood of confusion on the basis of the international trade mark registration No 1 025 864 designating the European Union, which obviously includes the French territory. Therefore, no likelihood of confusion exists with respect to those goods and services.

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.

a) Reputation of the earlier trade marks

The evidence submitted by the opponent to prove the reputation and highly distinctive character of earlier French trade mark No 3 636 873 and international trade mark No 1 025 864 designating the European Union has already been examined above under the grounds of Article 8(1)(b) EUTMR, as the documents provided by the opponent are the same for both earlier marks. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR and for French trade mark No 3 636 873.

b) The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR. Regarding earlier French trade mark No 3 636 873, although the relevant territory is only France, the perception of French consumers has already been taken into account by examining the signs on the basis of the earlier international trade mark. As a result of this, the conclusions drawn regarding international trade mark registration No 1 025 864 designating the European Union are the same for earlier French trade mark No 3 636 873.

c) The ‘link’ between the signs

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

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

 the degree of similarity between the signs;

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

 the strength of the earlier mark’s reputation;

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

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

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

In the present case, as seen above, the earlier marks are reputed to a certain extent and the signs are aurally similar to a low degree. Visually and conceptually, they are not similar. The degree of similarity between the signs is so low because the coincidence is limited to an element that, per se, is non-distinctive. The earlier marks have some reputation in France and have acquired enhanced distinctiveness because of their intensive use. However, it is the combination of the graphical features with the non-distinctive symbol of the earlier marks that is essential for their awareness among the relevant public. The specificities of the earlier marks, which make them recognisable by part of the relevant public, are not present in the contested sign. For this reason, the use of the symbol ‘+’ in the contested sign is not sufficient to consider that the relevant public will establish a link between the signs. Therefore, in view of the weak distinctive character of the element in question, the very low degree of similarity between the signs is unlikely to bring the earlier marks to the mind of the average consumer when encountering the contested sign.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

The Opposition Division

Martina GALLE

Benoit VLEMINCQ

Begoña URIARTE VALIENTE

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.