OPPOSITION No B 3 074 928

Thun SpA, Via Galvani 29, 39100 Bolzano, Italy (opponent), represented by Adexe Srl, Corso Porta Nuova 131, 37122 Verona, Italy (professional representative)

a g a i n s t

UK Ithun Brand Management Co. Ltd., Flat A1, 239 Earls Court Road, London SW5 9AH, United Kingdom (applicant), represented by Arcade & Asociados, C/Isabel Colbrand 6 - 5ª planta, 28050 Madrid, Spain (professional representative).

On 28/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 074 928 is partially upheld, namely for the following contested goods and services:

Class 3: Cleansing milk; detergents; essential oils; cosmetics for animals; air fragrancing preparations; cosmetics for children; cosmetic preparations for baths; beauty masks; make-up; perfumes; make-up removing preparations; phytocosmetic preparations; cosmetic preparations for skin care; make-up preparations; lipsticks; skin whitening creams; make-up powder; incense.

Class 21: Basins [receptacles]; glass flasks [containers]; pottery; China ornaments; drinking vessels; tea caddies; cabarets [trays]; tea services [tableware]; teapots; coffee services [tableware]; brushes; cosmetic utensils; thermally insulated containers for food; candelabra [candlesticks]; cloths for cleaning; feeding troughs; tea strainers; boxes for dispensing paper towels.

Class 30: Coffee; tea; flowers or leaves for use as tea substitutes; tea-based beverages; sugar; sweetmeats [candy]; honey; biscuits; pastries; instant rice; cereal preparations; noodles; cereal-based snack food; starch for food; ice cream; cooking salt; seasonings; essences for foodstuffs, except etheric essences and essential oils; puddings.

Class 43: Accommodation bureau services [hotels, boarding houses]; café services; canteen services; hotel services; restaurant services; food and drink catering; cafeteria services; hotel reservations; motel services; bar services; rental of transportable buildings; retirement home services; day-nursery [crèche] services; boarding for animals; rental of cooking apparatus; rental of drinking water dispensers; rental of lighting apparatus; rental of tents; boarding house services.

2. European Union trade mark application No 17 962 608 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 962 608 ‘ITHUN’, namely against the goods in Classes 3, 21 and 30 and services in Classes 35 and 43.

The opposition is based on the following earlier marks:

1) Italian trade mark registration No 1 308 969 ‘THUN’,

2) Italian trade mark registration No 1 535 214 ,

3) Italian trade mark registration No 1 601 718 ,

4) European Union trade mark registration No 16 287 401 .

The opponent invoked Article 8(1)(b) EUTMR in relation to all the above mentioned earlier trade marks, and Article 8(5) EUTMR only in relation to the earlier trade mark 1).

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:

IT No 1 308 969

Class 21: Ceramic decorative items; figurines; jars; ceramic flower pots; portable containers; dishes services; household and kitchen ceramic utensils.

IT No 1 535 214

Class 3: Room fragrancing products; potpourris; ethereal oils; preparations for perfuming or fragrancing the air.

IT No 1 601 718

Class 3: Soap; perfumery; essential oils; cosmetics; eau de Cologne; aloe vera preparations for cosmetic purposes; aromatics [essential oils]; cosmetics; cosmetic creams; almond milk for cosmetic purposes; cosmetic kits; essential oils; oils for perfumery purposes; cosmetic preparations for bath purposes; perfumes; air fragrancing preparations; bath salts, not for medical purposes; almond soap; shampoos; talcum powder, for toilet use; tissues impregnated with cosmetic lotions.

Class 21: Household goods, household utensils and containers of ceramic, articles of ceramic for use in and for decorating the home; glassware; porcelain and earthenware not included in other classes; ceramic figurines; candy boxes not of precious metal; works of art made of ceramic; storage canisters and glass pots and ceramics; tableware of ceramic; kitchen utensils of porcelain and glass; decorative ceramic bricks, not for use as building materials; perfume diffusers of ceramic and accessories therefor.

EUTM No 16 287 401

Class 30: Coffee; Tea; Cocoa; Artificial coffee; Rice; Meal; Cereal preparations; Bread; Sponge cakes; Confectionery; Filled bread rolls; Edible ices; Sugar; Honey; Golden syrup; Yeast; Mustard; Vinegar; Sauces [condiments]; Ice for refreshment; Oat-based food; Seasonings; Coffee flavourings; Flavourings, other than essential oils, for cakes; High-protein cereal bars; Cocoa-based beverages; Coffee-based beverages; Chocolate-based beverages; Tea-based beverages; Caramels [candy]; Natural sweeteners; Fruit jellies [confectionery]; Cake frosting [icing]; Chewing gum; Infusions, not medicinal; Pasta; Pizzas; Sandwiches; Cereal-based snack food; Rice-based snack food; Snack foods consisting principally of bread; Fruit cake snacks; Flour based savory snacks; Spices; Meat gravies; Tarts; Vanilla flavourings for culinary purposes; Frozen yoghurt [confectionery ices].

Class 43: Serving food and drinks; Café services; Snack-bar services; Providing food and drink in restaurants and bars; Take-out restaurant services; Hotel services; Food and drink catering.

The contested goods and services are the following:

Class 3: Cleansing milk; detergents; essential oils; cosmetics for animals; air fragrancing preparations; cosmetics for children; cosmetic preparations for baths; beauty masks; make-up; perfumes; make-up removing preparations; phytocosmetic preparations; cosmetic preparations for skin care; make-up preparations; lipsticks; skin whitening creams; make-up powder; shining preparations for fruits; incense.

Class 21: Basins [receptacles]; glass flasks [containers]; pottery; China ornaments; drinking vessels; tea caddies; cabarets [trays]; tea services [tableware]; teapots; coffee services [tableware]; brushes; cosmetic utensils; thermally insulated containers for food; candelabra [candlesticks]; cloths for cleaning; feeding troughs; tea strainers; boxes for dispensing paper towels.

Class 30: Coffee; tea; flowers or leaves for use as tea substitutes; tea-based beverages; sugar; sweetmeats [candy]; honey; biscuits; pastries; instant rice; cereal preparations; noodles; cereal-based snack food; starch for food; ice cream; cooking salt; seasonings; essences for foodstuffs, except etheric essences and essential oils; puddings.

Class 35: Advertising; publicity; advertising agency services; on-line advertising on a computer network; demonstration of goods; distribution of samples; business information; import-export agency services; procurement services for others [purchasing goods and services for other businesses]; personnel management consultancy; web site traffic optimization; rental of vending machines; retail services for pharmaceutical, veterinary and sanitary preparations and medical supplies; presentation of goods on communication media, for retail purposes; design of advertising materials; provision of an on-line marketplace for buyers and sellers of goods and services; business management consultancy; web indexing for commercial or advertising purposes; rental of advertising space.

Class 43: Accommodation bureau services [hotels, boarding houses]; café services; canteen services; hotel services; restaurant services; food and drink catering; cafeteria services; hotel reservations; motel services; bar services; rental of transportable buildings; retirement home services; day-nursery [crèche] services; boarding for animals; rental of cooking apparatus; rental of drinking water dispensers; rental of lighting apparatus; rental of tents; boarding house services.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 3

The contested air fragrancing preparations, perfumes and essential oils are identically contained in the list of the earlier Italian trade marks No 1 601 718 and/or No 1 535 214 (including synonyms).

The contested cleansing milk; cosmetics for animals; cosmetics for children; cosmetic preparations for baths; beauty masks; make-up; make-up removing preparations; phytocosmetic preparations; cosmetic preparations for skin care; make-up preparations; lipsticks; skin whitening creams; make-up powder are included in the broad category of cosmetics (IT No 1 601 718). Moreover, the contested incense is included in the broad category of the opponent’s room fragrancing products (IT No 1 535 214), and the contested detergents overlap with the opponent’s soap (IT No 1 601 718) insofar as it covers soaps for household use. Therefore, these goods are identical.

The contested shining preparations for fruits are specific products, such as waxes, used to cover the surface of fruits to make them shiny and to improve their appearance. They target professional customers in the fruit industry. The opponent argues that these goods are similar to soap of the Italian earlier mark No 1 601 718. However, contrary to the opponent’s arguments, the purpose and relevant public of these goods do not coincide. It should be noted that although soaps in Class 3 is a broad category, which covers soaps for personal and household use, it does not include soaps used in industry and in manufacturing operations. Such soaps would be classified in Class 1. Consequently, not only the purpose and public, but also the usual producers and distribution channels of shining preparations for fruits and soap in Class 3 are different. These goods are neither complementary nor in competition. Furthermore, shining preparations for fruits have nothing relevant in common with the remaining opponent’s goods and services in Classes 3, 21, 30 and 43 which belong to totally different market sectors and do not share any relevant similarity criteria with these contested goods. Therefore, they are dissimilar.

Contested goods in Class 21

The contested basins [receptacles]; glass flasks [containers]; pottery; China ornaments; drinking vessels; tea caddies; cabarets [trays]; tea services [tableware]; teapots; coffee services [tableware]; thermally insulated containers for food; candelabra [candlesticks]; feeding troughs; tea strainers; boxes for dispensing paper towels are included in, or overlap with, the opponent’s broad categories of household utensils and containers of ceramic, articles of ceramic for use in and for decorating the home; glassware and/or household and kitchen ceramic utensils of the earlier Italian trade marks No 1 601 718 and No 1 308 969 respectively. Therefore, they are identical.

The contested cosmetic utensils and brushes, which include for example make-up brushes are indispensable for the use of some make-up products. Consequently, they are complementary to the opponent’s cosmetics in Class 3, and together they serve the same purpose of beautification. Furthermore, they are manufactured by the same producers, are sold in the same shops and target the same public. Therefore, they are similar to a high degree.

The contested cloths for cleaning are pieces of textile material used for cleaning. To this extent they share the same purpose with the opponent’s soaps in Class 3 which include soaps for household purposes. Moreover, they have the same distribution channels and relevant public. Finally, there may be a complementary relation between these goods insofar as cleaning cloths may be necessary for the use of soap products. Therefore, they are similar.

Contested goods in Class 30

The contested coffee; tea; tea-based beverages; sugar; honey; cereal preparations; cereal-based snack food; ice cream; seasonings are identically contained in the list of goods (including synonyms) of the opponent’s earlier EUTM, while the contested biscuits; instant rice; noodles and cooking salt are included in the broad categories of the opponent’s cereal preparations; rice; pasta and seasonings, respectively. Therefore, these goods are identical.

Moreover, the contested pastries include the opponent’s tarts, the contested essences for foodstuffs, except etheric essences and essential oils include the opponent’s vanilla flavourings for culinary purposes, and the contested sweetmeats [candy] include the opponent’s caramels [candy]. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods they are considered identical to the opponent’s goods too.

The contested flowers or leaves for use as tea substitutes are highly similar to the opponent’s tea. The goods have the same methods of use and are in competition with each other. Furthermore, they target the same relevant public, share the same distribution channels and can originate from the same producers.

The contested starch for food may take the consistency of flour and be used for thickening other foodstuffs on account of its starch content. It is therefore in competition with the opponent’s meal. Moreover, they have the same producers, distribution channels and public. Therefore, they are similar.

The contested puddings are, among others, cooked sweet dishes, such as a sponge pudding. They are at least similar to the opponent’s sponge cakes. They have a similar nature, may be in competition, are produced by the same undertakings and sold in the same shops or sections of supermarkets.

Contested services in Class 35

The majority of the contested services in this Class belong to the categories of advertising, business management and administration services, and office functions. They are aimed at supporting or helping other businesses to do or improve business. All these services are in principle directed at the professional public and provided by advertising agencies, business consultants or companies specialised in administrative services. Moreover, the contested services cover rental of vending machines which is also directed at professional public.

The opponent’s goods are cosmetics and perfumery goods in Class 3, household and decorative items in Class 21, foodstuffs and beverages in Class 30 and provision of food, drinks and hotel services in Class 43.

Contrary to the opponent’s arguments, the contested services and the opponent’s goods and services have completely different natures and purposes. They are distributed through different channels, are manufactured or provided by different companies and target customers with different needs. The production process of the relevant goods and the provision of the relevant services require completely different skills, technical knowledge and infrastructures. Therefore, these goods and services are dissimilar.

In particular, as regards the contested rental of vending machines, the opponent claims that they are similar to a low degree to cereal preparations, confectionery, edible ices, tea-based beverages, caramels [candy], chewing gum, cereal-based snack food in Class 30 of the earlier EUTM, because such machines can be mono-branded and bear the same mark as the products sold. However, the Opposition Division disagrees with the opponent that this fact could lead to finding of a similarity between these goods and services, as their usual producers/providers are different and the relevant public is not likely to think a company renting vending machines also manufactures products that are sold through the machine or vice versa. Examples of branded vending machines submitted by the opponent in Annex B.1 may show, as claimed by the opponent, the existence of a possible agreement between some foodstuffs or beverages companies and vending machine rental company, but this is clearly insufficient to conclude that these goods and services coincide in any relevant criteria applicable for finding of similarity for the purposes of Article 8(1)(b) EUTMR. Therefore, these goods and services are dissimilar.

The remaining contested services are retail services for pharmaceutical, veterinary and sanitary preparations and medical supplies. Apart from being different in nature than the opponent’s goods and services, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of the opponent’s goods and services. Furthermore, these goods and services have different methods of use and are neither in competition nor complementary. Finally, similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case, since the goods at issue (pharmaceutical, veterinary and sanitary preparations and medical supplies) are not identical to the opponent’s goods. Therefore, these goods and services are dissimilar.

Contested services in Class 43

The contested café services; hotel services and food and drink catering are identically contained in the list of services (including synonyms) of the opponent’s earlier EUTM. The contested canteen services; restaurant services; cafeteria services; bar services are included in the broad category of the opponent’s serving food and drinks. The contested boarding for animals overlaps with the opponent’s hotel services. Therefore, these services are identical.

The contested boarding house services; motel services; retirement home services have the same nature, purpose, relevant public and providers as the opponent’s hotel services since they all concentrate on providing temporary accommodation. Moreover, at least as regards motel and hotel services, they are in competition. Therefore they are highly similar.

Accommodation bureau services [hotels, boarding houses]; hotel reservations are similar to the opponent’s hotel services, because these services are complementary, they are distributed through the same channels and target the same public.

The contested rental of cooking apparatus and rental of drinking water dispensers can be rendered by the same providers as the opponent’s food and drink catering, to the same users and through the same channels in the context of events such as outdoor celebrations, weddings, parties, etc. Therefore, these services are deemed to be similar.

The opponent’s hotel services can be rendered in combination with the contested day-nursery [crèche] services. Although the nature and purpose of these services is different, it is common to find such optional services within the facilities of a hotel establishment. Therefore, the providers may coincide, as well as the distribution channels and the end users. For these reasons, these services are considered to be similar to a low degree.

The contested rental of transportable buildings (such as yurts) and rental of tents are alternative forms of temporary accommodation. These services and the opponent’s hotel services may therefore have the same purpose and be in competition. Moreover, they are directed at the same relevant public and their distribution channels may also coincide. Therefore they are similar to at least a low degree.

Contrary to the opponent’s claims, the contested rental of lighting apparatus is not usually rendered by the same companies as those providing the opponent’s services relating to the provision of food of drinks in Class 43 of the earlier EUTM. Even though these services could all target the general public, this is not sufficient to consider them similar as they respond to different needs and are usually distributed through different channels. Finally, these contested services have nothing relevant in common with the remaining opponent’s goods and services. They have different nature, purpose, and producers/providers, and they are not complementary or in competition. Therefore, they are dissimilar.

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 found to be identical or similar to various degrees are directed at the public at large and at professionals, for example, as far as retail services of medical supplies are concerned.

The degree of attention may vary from low to high depending on the nature of the goods and services, their price and frequency of purchase. It will be rather low for cheap goods for daily consumption, such as sugar, and relatively high for example in relation to retirement home services which imply important life and financial decisions.

c) The signs

IT No 1 308 969 THUN IT No 1 601 718 IT No 1 535 214 EUTM No 16 287 401	ITHUN
Earlier trade marks	Contested sign

The relevant territories are the European Union (for the earlier EUTM) and Italy (for the earlier Italian trade marks).

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 likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Since Italy is the common territory for all the earlier marks, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian part of the public.

The word elements of the earlier marks (‘THUN’) and of the contested sign (‘ITHUN’) are meaningless for the Italian public and have an average degree of distinctiveness.

The figurative features of the three out of four earlier marks consist of a simple square frame, with an orange background in the case of the Italian mark No 1 601 718 and with a white background for the other two signs, a line below the word element and a slightly stylised typeface. They are not distinctive, per se, and play a secondary role in relation to the distinctive word element ‘THUN’.

Visually, the signs are similar to the extent that the last four letters ‘THUN’ of the contested sign make up the totality of the earlier marks. On the other hand, they differ in the first letter ‘I’ of the contested sign and, in the case of the figurative earlier marks, in their non-distinctive figurative elements. Therefore, taking into account that the additional letter occupies a very limited space in the contested sign, the signs are visually similar to a high degree.

Aurally, the pronunciation of the marks coincides in the sound of the letters /THUN/ present identically in the signs, and differs in the sound of the first letter /I/ of the contested sign, which has no counterpart in the earlier marks. The fact that the only additional sound is audible at the beginning of the contested sign does not offset the fact that the aural coincidence concerns two thirds of the sign. Therefore, the signs are aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

d) Distinctiveness of the earlier marks

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

The opponent did not explicitly claim that its earlier EUTM and Italian trade marks No 1 601 718 and No 1 535 214 are particularly distinctive by virtue of intensive use or reputation. Moreover, even if the opponent based its arguments concerning the grounds of Article 8(1)(b) EUTMR on the inherent distinctiveness of the earlier marks only, it also claimed in its observations that the earlier Italian trade mark No 1 308 969 ‘THUN’ was reputed for goods in Class 21. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case under the grounds of Article 8(1)(b) EUTMR (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

e) Global assessment, other arguments and conclusion

The contested goods and services are partly identical and partly similar to varying degrees to the opponent’s goods and services. They are addressed at the public at large and at professionals whose degree of attention may vary from low to high.

The earlier marks have a normal degree of inherent distinctiveness.

The signs are visually and aurally similar to a high degree to the extent that they share the four letters ‘THUN’, placed in the same order. The entire verbal element of the earlier marks is fully included in the contested sign which only differs in its initial letter ‘I’. Furthermore, the impact of the figurative features of the figurative earlier marks is limited because they are not distinctive and because the word ‘THUN’ is the only element by which the public will refer to the earlier marks.

While it is true that the initial part of the word marks may be liable to attract the consumer’s attention more than the following parts, the difference in the first letter of the contested sign is not enough to counteract the similarities between the signs in respect of all the other letters, which are identically displayed, and which make up the entirety of the only verbal and distinctive element of the earlier marks, and the majority of the contested sign. Furthermore, the conflicting signs do not convey any meaning.

In addition, account is taken of the fact that average consumers, even those who pay a high degree of attention, rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; 21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

In such circumstances, the differences between the signs are not sufficient to allow the relevant public to safely differentiate between the signs. Given the high degree of similarity between the signs, this is not only true for identical goods and services, but even for those goods and services that have been found to be similar only to a low degree.

Considering all the above, there is a likelihood of confusion for the Italian part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Italian trade mark registrations No 1 308 969, No 1 535 214 and No 1 601 718, and EUTM registration No 16 287 401. Regarding the earlier EUTM, as stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to various degrees to those of the earlier trade marks.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this Article and directed at these goods and services cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark No 1 308 969 in relation to which the opponent claimed reputation, there is no need to assess the enhanced degree of distinctiveness of this opposing mark in relation to identical and similar goods and services. Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of this mark in relation to dissimilar goods and services, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if that earlier mark enjoyed an enhanced degree of distinctiveness.

The examination of the opposition will continue on the basis of Article 8(5) EUTMR in relation to the remaining dissimilar goods and services.

REPUTATION — ARTICLE 8(5) EUTMR

The opponent invoked Article 8(5) EUTMR in relation to Italian trade mark registration No 1 308 969 ‘THUN’.

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 in Italy.

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 27/09/2018. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Italy prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 21: Ceramic decorative items; figurines; jars; ceramic flower pots; portable containers; dishes services; household and kitchen ceramic utensils.

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

On 25/06/2019 the opponent submitted evidence to support this claim. As the opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. This does not apply to publicly accessible information, such as articles published on internet.

The evidence submitted to prove reputation of the earlier mark consists of the following documents:

 Exhibit C.1 – An article from Wikipedia, printed on 17/06/2019, describing the opponent’s history. It states that the company was founded in 1950. It refers to the annual turnover of nearly 88 million euros reached by the company in 2016 and its 1200 sales outlets in Europe.

 Exhibit C.2 – Printout dated 17/06/2019 from the website www.reportaziende.it which, as explained by the opponent, offers search and information services about companies registered in Italy. It shows the evolution of the opponent’s revenue from 2015 to 2017 which is substantial.

 Exhibit C.3 – Company Registration Report, dated 07/03/2017, from the Chamber of Commerce, Industry, Handicrafts and Agriculture of Bolzano – Italian Business Register Company Registration Office, indicating the founding date of the company (28/03/1980), its main economic activity (‘manufacture of ceramic household and ornamental articles’), the capital of the company, the number of its employees, etc.

 Exhibits C.3.a – Printouts from the opponent’s website dated 27/10/2017, showing the list of the opponent’s stores and places where the opponent’s products are sold in Italy.

 Exhibits C.4, C5, C.5.a and C.13.bb1 – Printouts from the opponent’s website dated 21/06/2019 presenting the following categories of goods: ‘Ceramic decorative items’, ‘Figurines’, ‘Jars, pots and containers’, ‘Dishes and dishes services’, ‘Cutlery and kitchen utensils’. The goods can be purchased online.

 Exhibits C.5.aa and C.5.aaa – Extracts dated 21/06/2019 from the website www.similarweb.com containing Internet traffic statistics concerning the opponent’s website between December 2018 and May 2019 (for example, 94.86% of its visitors are located in Italy), and from the website www.web.archive.org showing how many times the opponent’s website was saved by the Wayback Machine between 02/03/2000 and 08/06/2019 .

 Exhibit C.6 – Extracts from the opponent’s ‘Ordinary financial statement’ related to the years 2009-2015 from Business register – official archive of Chamber of Commerce, Industry, Handcrafts and Agriculture of Bolzano (Italy) showing the opponent’s substantial advertising and fairs expenditure.

 Exhibits C.7 - C.13.e – Evidence concerning the opponent’s video advertising campaigns: printouts from the website www.youtube.com showing images from the opponent’s advertising spots from 2010, 2011, 2012, 2015, 2017 and 2018; article ‘90’’ TV for Thun’ from the website design.pambianconews.com stating that the opponent’s advertising video was broadcasted throughout 2011 on Italia 1 and Canale 5 TV channels; article ‘Thun returns to TV with Lifecircus’ dated 01/12/2015 from the website www.pubblicitaitalia.it concerning the broadcasting of the opponent’s commercial in November and December 2015 on the main RAI channels; scheduling calendar for December 2017 of the opponent’s adverting spots on the Mediaset Group television broadcasters; information from Wikipedia and the website www.auditel.it concerning the abovementioned TV channels and companies.

 Exhibit C.13.f and C.13.g – Invoices from a third party addressed to the opponent for broadcasting of radio advertising spots on various Italian radio stations in July and August 2018; information about the concerned radio stations.

 Exhibits C.14 - C.14.y – Various press clippings dated between 2009 and 2018 referring to the opponent and its products, and additional information about the Italian magazines, newspapers and blogs in which they were published.

 Exhibits C.14_bis, C.15 - C.17.bb – Printouts from various websites giving examples of collaborations between the opponent and other companies, namely Labello in 2013, Caffarel and Conad in 2016 and Revlon in 2017, and an article dated 17/10/2018 from the magazine Vanity Fair highlighting the partnership between the opponent and the company Disney.

 Exhibits C.9a, C.14q,r, C.18 and C.18b - Extracts from the opponent’s catalogues 2012-2018 showing a variety of products, such as figurines and other ceramic decorative items, vases, jars, plates, tea and coffee sets, salt and pepper sets, and other household recipients (onion holder, cheese bowl, etc).

 Exhibit C.19 (and photographs included in the opponent’s observations under point 132) – Awards received by the opponent: ‘Franchising Award’ (2011), ‘Positive Business Award’ (2014, 2015 and 2016), ‘Premio Lorenzetti’ (2015) and ‘Asso del Franchising’ (2016).

 Exhibit C.20 and C.20.2 - Results of a market research ‘Thun – L’evoluzione del marchio’ carried out by the company Synovate in 2009 and the final report of a market research ‘Thun – Brand Equity Assessment’ conducted by PricewaterhouseCoopers in March 2017. The documents are in Italian and the relevant parts have been translated by the opponent in its observations. The printout from Wikipedia in Exhibit C.20.a gives information about the company Synovate (‘a leading global market research company’).

 Exhibits C.21 - C.31 – Numerous invoices dated between 2008 and 2018 addressed from the opponent to various clients in different locations in Italy, and a document with an explanation of codes used on the invoices and a translation into English of the highlighted Italian terms.

The above mentioned evidence, in particular the invoices, catalogues, information about the opponent and press articles, indicates that the earlier trade mark has been used for a substantial period of time. The very significant revenue figures (as shown in Exhibit C.2), marketing efforts (important advertising investment and advertising spots broadcasted on national TV and radio channels), various references in the national press and the awards won by the opponent suggest that the trade mark has a consolidated position on the Italian market in relation to ceramic decorative items and household articles such as ceramic jars, flower pots, dishes, cups and mugs.

Moreover, the opponent presented the results of two market studies, one from 2009 and the other from March 2017, both conducted by independent and recognised research companies. In principle, opinion polls and market surveys are the most suitable means of evidence for providing information about the degree of knowledge of the mark, the market share it holds, or the position it occupies on the market in relation to its competitors’ goods. In the present case, the probative value of the studies is rather limited due to the characteristics of the sample used (the survey was carried out only among women) and/or questions asked (which were rather of a leading type). However, they provide at least some indications about the recognition of the earlier mark, especially as regards its position on the market where it occupied the leading position amongst competitors in terms of top-of-mind and spontaneous brand awareness. Since the results of these market surveys are not sufficient on their own to support a finding of reputation, they need to be seen in light of the remaining evidence mentioned above which clearly shows that the earlier mark has been used and marketed extensively and over a long period of time.

Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade mark enjoys a certain degree of recognition among the relevant public, which leads to the conclusion that the earlier trade mark enjoys some degree of reputation in relation to the goods for which reputation is claimed in Class 21. 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 and the relevant consumers.

b) The signs

THUN	ITHUN
Earlier trade mark	Contested sign

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.

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.

In the present case, the signs are visually and aurally similar to a high degree, while the conceptual aspect does not influence the assessment of the similarity of the signs, as established above in the comparison of signs. The similarity between the signs results from the letters ‘THUN’ composing the entirety of the earlier mark and the majority of the contested sign, ‘ITHUN’, and is sufficiently strong to lead to a likelihood of confusion when the signs are featured on identical or similar goods or services.

The earlier mark is inherently distinctive and enjoys a certain degree of reputation for ceramic decorative items, figurines, jars, ceramic flower pots, portable containers, dishes services, household and kitchen ceramic utensils.

The opposition is directed against the following remaining goods and services:

Class 3: Shining preparations for fruits.

Class 35: Advertising; publicity; advertising agency services; on-line advertising on a computer network; demonstration of goods; distribution of samples; business information; import-export agency services; procurement services for others [purchasing goods and services for other businesses]; personnel management consultancy; web site traffic optimization; rental of vending machines; retail services for pharmaceutical, veterinary and sanitary preparations and medical supplies; presentation of goods on communication media, for retail purposes; design of advertising materials; provision of an on-line marketplace for buyers and sellers of goods and services; business management consultancy; web indexing for commercial or advertising purposes; rental of advertising space.

Class 43: Rental of lighting apparatus.

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

The Opposition Division notes that an association between the marks is more likely where there is a special connection between the goods and services covered by the conflicting signs.

As regards the contested rental of lighting apparatus, the Opposition Division notes that lamps or strings of lights may be rented for decoration purposes, for example for special events or celebrations. The purpose of these services may therefore coincide to some extent with the purpose of the opponent’s ceramic decorative items. Moreover, these goods and services target the same public (the public at large) and can be distributed through the same channels. In the catalogues submitted by the opponent in Exhibit C.18 it can be seen that the opponent’s range of products includes decorative ceramic lamps which could be the object of the contested services. Therefore, there is a certain relationship between the concerned market sectors.

In such circumstances and weighing up all the relevant factors, the Opposition Division considers that when encountering the contested mark ‘ITHUN’ in relation to the contested rental of lighting apparatus, the relevant consumers will be likely to establish a mental ‘link’ with the highly similar earlier mark ‘THUN’ which enjoys some reputation for ceramic decorative items.

As regards the remaining contested goods and services, the Opposition Division notes that they do not concern related market sectors. The opponent’s goods are decorative ceramic items and other articles for household use. The contested shining preparations for fruits in Class 3 are, as explained above, specific products used in the fruit industry. The majority of the contested services in Class 35 belong to the categories of advertising, business management and administration services, and office functions. They are aimed at supporting or helping other businesses to do or improve business. All these services are in principle directed at the professional public and provided by advertising agencies, business consultants or companies specialised in administrative services. Moreover, the contested services in this Class cover rental of vending machines, which is also directed at the professional public, and retail services for pharmaceutical, veterinary and sanitary preparations and medical supplies, which target both the general public and professionals.

The opponent’s goods and the contested goods and services are of a different nature and have different purposes. They have divergent distribution channels, are usually offered by different companies or suppliers, and their manufacture or provision requires different skills, technical knowledge and infrastructures. It is not common on the market that the producers of ceramic articles also manufacture shining preparations for fruits, retail health related goods or provide advertising or other business related services to third party companies. Moreover, ceramic items are not likely to be sold in vending machines rented by the applicant. It should be also noted that advertising one’s own goods or running its own company are not considered as services designated by Class 35 within the meaning of the Nice Classification.

Even though Article 8(5) EUTMR may apply in relation to dissimilar goods and services, a ‘link’ between the signs requires a certain connection between the goods and services at issue. While the opponent submitted evidence (Exhibits D.1 to D.4 and D.6) to show that certain relation exists between its goods in Class 21 and some of the contested goods in Class 3 such as cosmetics and perfumery products in relation to which the opposition has been already upheld under Article 8(1)(b) EUTMR, it did not provide any arguments concerning the remaining contested goods and services. The Opposition Division notes that although the above mentioned goods and services are clearly dissimilar, a certain connection exists between them as far as the relevant public for the goods and services covered by the conflicting marks overlaps to some extent, insofar as the earlier mark may be known to the public targeted by the contested mark, including to the specialised public outside their professional activity.

When an association between the marks needs to be established, the Court has observed that it is sufficient that a part of the public that is already familiar with the earlier mark be exposed to the later mark. A link between the signs will be easier to establish where the earlier mark is known to the public at large, or where the consumers of the conflicting goods/services largely overlap.

Moreover, for the purposes of assessing whether there is a link between the marks at issue, it is also necessary to take into account the similarity between the signs, the degree of inherent distinctiveness of the earlier mark and the strength of the earlier mark’s reputation.

In the present case, even if the reputation of the earlier mark is not high, the earlier mark is inherently distinctive and the marks are highly similar. In fact, the public familiar with the earlier mark ‘THUN’ will easily perceive it in the contested sign which only differs in one additional letter ‘I’ placed at the beginning.

Having weighed in all of these factors in an overall assessment, it cannot be excluded that the contested sign, when used in relation to the relevant goods in Class 3 and services in Class 35, may bring the earlier mark to the minds of the relevant consumers. However, since in case of these particular goods and services the relevant market sectors are distant and the reputation of the earlier mark is not high, the ‘link’ between the trade marks at issue is not strong.

In this regard it is recalled that, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96).

d) Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

In the present case, the opponent essentially claims that use 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.

Unfair advantage (free-riding)

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

The opponent bases its claim on the following:

 In Italy, the earlier mark ‘THUN’ is among the best known in the gift and household goods sector and enjoys a great reputation with respect to such goods amongst a significant part of the relevant public.

 The earlier mark ‘THUN’ consists of a verbal element which has no meaning in Italian and which is probably considered a fanciful term or, at most, a foreign word by the relevant public. Therefore, it has a medium level of inherent distinctiveness and should be considered essentially ‘unique’ in the panorama of distinctive signs used for commercial purposes in the relevant territory.

 The conflicting marks have a high degree of similarity.

 Due to this high similarity between the signs, the use of the contested mark would inevitably lead the relevant public to make a link with the trade mark ‘THUN’.

 All these elements lead to a high the risk that the applicant, by adopting the contested mark, unduly benefit from the commercial and marketing investments made by the opponent in relation to the trade mark ‘THUN’.

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

In view of the nature of the goods and services, and their overlapping public, it is considered that the relevant public against which the injury upon reputation must be assessed is the public at large in Italy.

In order 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.

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

The signs are highly similar. The additional letter ‘I’ at the beginning of the contested sign does not prevent the relevant public from perceiving in it the earlier mark ‘THUN’ which enjoys a certain degree of reputation in relation to the goods in Class 21.

As explained in the previous section, it is reasonable to assume that the average consumer of ceramic decorative items, who knows the reputed earlier mark ‘THUN’ and sees the mark ‘ITHUN’ in relation to rental of lighting apparatus would immediately recall the earlier mark. Due to a clear relation between the market sectors that said association between the signs could produce a commercial benefit for the applicant.

The association between the signs at issue enables the transfer of the earlier mark’s attractiveness to the contested sign, thus making the marketing of the applicant’s goods easier by their association to the earlier mark with a reputation. This may lead to an unacceptable situation of commercial parasitism where the applicant is allowed to take a ‘free-ride’ on the investment of the opponent in promoting and building-up repute for its mark, as it may stimulate the sales of the applicant’s goods to an extent that is disproportionately high in comparison with the size of its promotional investment.

On the basis of the above, the Opposition Division concludes that the contested trade mark applied for rental of lighting apparatus in Class 43 is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark.

As regards the remaining contested goods, namely shining preparations for fruits in Class 3, and services in Class 35, the Opposition Division refers to the previous assertions regarding the distance between the relevant market sectors and a limited degree of reputation of the earlier mark proven by the opponent. Although it cannot be excluded that the contested sign may bring the earlier mark in the mind of at least a part of the relevant public, the fact remains that the link between the marks is not strong.

On an overall assessment of all of the circumstances of the case with a view to determine whether the signs at issue may be associated in a way that may adversely affect the earlier mark, it is concluded that since the reputation of the earlier mark is not high and the distance between the relevant market sectors is important, there can be no possibility of the applicant benefiting from the distinctive character of the earlier mark, even if a link were made between the signs. Despite the high degree of similarity between the marks, the use of the contested mark in relation to shining preparations for fruits, business related services, rental of vending machines or retail of health related products is not likely to result in misappropriation of the earlier mark’s powers of attraction or exploitation of the image that the earlier mark has in the area of household ceramic products. A somewhat limited degree of the earlier mark’s reputation demonstrated by the opponent does not imply that it is of such a strength that it could produce effects beyond the relevant or related market sectors. The circumstances of the present case do not amount to a conclusion that the ‘link’ that may exist between the signs may stimulate the sales of the applicant’s shining preparations for fruits in Class 3 and services in Class 35, and have an adverse effect on the earlier mark.

Moreover, the opponent has not put forward cogent arguments as to how the use of the later mark in relation to the above mentioned goods and services under examination would cause detriment or take advantage of the repute or distinctive character of the earlier mark.

On the basis of the above, and in the absence of any cogent arguments of the opponent in relation shining preparations for fruits in Class 3 and all the contested services in Class 35 under examination, the Opposition Division concludes that the use of the contested trade mark for these goods and services is unlikely to take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Other types of injury

The opponent also argues that use of the contested trade mark would be detrimental to the distinctive character and repute of the earlier trade mark.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the use of the contested trade mark for rental of lighting apparatus would take unfair advantage of the repute of the earlier trade mark. It follows that there is no need to examine whether other types of injury also apply in relation to these services.

Therefore, the examination of the existence of a risk of injury continues in relation to the contested shining preparations for fruits in Class 3 and services in Class 35.

Detriment to the distinctive character (dilution)

Detriment to the distinctive character of the earlier mark (also referred to as ‘dilution’, ‘whittling away’ or ‘blurring’) is caused when that mark’s ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to ‘dispersion’ of the identity of the earlier mark (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 29).

In relation to this type of injury, apart from merely mentioning it in the observations, the opponent claims that since the mark ‘THUN’ is not used by third parties in relation to their commercial activities in the relevant territory, the risk of dilution of the earlier mark is clearly high. To support its argument the opponent submitted in Exhibit D.5 the results of an internet research for the word ‘thun’ on Google, which according to the opponent prove that the sign ‘THUN’ is only used in the relevant territory by the opponent to identify its products and stores.

The Opposition Division is not persuaded by these arguments. The circumstances in the present case do not suggest that use of the contested trade mark will result in dilution of the earlier trade mark.

Detriment to the distinctiveness of the earlier reputed mark occurs where use of a later similar mark reduces the distinctive quality of the earlier reputed mark. However, this cannot be found to occur merely because the earlier mark has a reputation and is identical with or similar to the mark applied for — such an approach would apply an automatic and indiscriminate finding of likelihood of dilution against all marks that are similar to reputed trade marks and would negate the requirement of proving detriment.

According to the case-law, proof that the use of the later mark is, or would be, detrimental to the distinctive character of the earlier mark requires evidence of a ‘change in the economic behaviour’ of the average consumer of the goods/services for which the earlier mark was registered, consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 77 and 81).

Whilst the opponent does not need to submit evidence of actual detriment, it must convince the Office by adducing evidence of a serious future risk — which is not merely hypothetical — of detriment. In the present case, as seen above, the opponent merely claims that the sign ‘THUN’ is only used by the opponent in the relevant territory and that the use of a similar contested mark would cause detriment to the distinctive character of the earlier mark. The results of the internet search submitted by the opponent are clearly insufficient to corroborate this claim. Moreover, the opponent did not mention at all or provide a coherent line of argumentation in relation to the specific contested goods in Class 3 and services in Class 35 and how use of the contested mark in relation to those would lead to detriment. The opponent may prove detriment by submitting, for example, evidence that proves a likelihood of detriment on the basis of logical deductions made from an analysis of the probabilities (and not mere suppositions) and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case (16/04/2008, T-181/05, Citi, EU:T:2008:112, § 78, as cited in 22/05/2012, T-570/10, Répresentation d’une tête de loup, EU:T:2012:250, § 52 and confirmed in the appeal by judgment of 14/11/2013, C-383/12 P, Répresentation d’une tête de loup, EU:C:2013:741, § 42-43).

Under these circumstances, the Opposition Division finds that the opponent failed to put forward any evidence or a cogent line of argumentation to support the conclusion that there is a risk of detriment to the distinctive character of the mark.

On the basis of the above, the Opposition Division concludes that there are no indications suggesting that the use of the contested trade mark would be detrimental to the distinctive character of the earlier trade mark.

Detriment to repute (tarnishing)

Detriment to repute occurs where the goods or services covered by the contested trade mark appeal to the public’s senses in such a way that the earlier mark’s power of attraction is diminished. There is a risk of such detriment occurring, inter alia, where the contested goods or services have a characteristic or a quality that may have a negative influence on the image of an earlier mark with a reputation on account of it being identical or similar to the contested trade mark (18/06/2009, C‑487/07, L’Oréal, EU:C:2009:378, § 40; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 39).

In relation to this type of injury, apart from mentioning them in the observations, the opponent merely argues that the public will establish a link between the trade marks because of the high similarity between them, as set out in the foregoing section of this decision under ‘Unfair advantage (free-riding)’, and concludes that this will diminish the earlier mark’s attractiveness and devaluate its image acquired amongst the relevant public. However, the opponent did not submit any facts, arguments or evidence that could support the conclusion that use of the contested trade mark would be detrimental to the repute of the earlier trade mark.

Article 8(5) EUTMR is not intended to prevent the registration of all marks identical or similar to a mark with reputation. According to established case-law, ‘once the condition as to the existence of reputation is fulfilled, the examination has to proceed with the condition that the earlier mark must be detrimentally affected without due cause’ (14/09/1999, C-375/97, Chevy, EU:C:1999:408, § 30).

Even though consumers may or are likely to establish a link between the two trade marks, in the sense, for example, that the contested trade mark would bring the earlier trade mark to the minds of consumers, it does not follow automatically that the former will take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 71).

As mentioned above, the opponent should have submitted evidence, or at least put forward a coherent line of argument demonstrating what the detriment would consist of and how it would occur, which could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

This is confirmed by Article 7(2)(f) EUTMDR, which establishes that if the opposition is based on a mark with a reputation within the meaning of Article 8(5) EUTMR, the opponent must submit evidence showing that the mark has a reputation, as well as evidence or arguments demonstrating that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

In the present case, the opponent briefly elaborates its claims with regard to unfair advantage (free-riding) and detriment to the distinctiveness (dilution), but the other type of injury is only mentioned. It has to be clarified that the circumstances described as being ‘detrimental to the repute’, ‘detrimental to the distinctive character’, or taking ‘unfair advantage of the distinctive character or repute of the earlier trade mark’, are in fact very different from each other. However, there seems to be no good reason to assume that use of the contested trade mark in relation to shining preparations for fruits in Class 3 or the relevant services in Class 35 will result in any such events occurring.

According to Article 95(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office restricts its examination to the facts, evidence and arguments submitted by the parties and the relief sought.

On the basis of the above, the Opposition Division concludes that there are no indications suggesting that the use of the contested trade mark would be detrimental to the repute of the earlier trade mark.

e) Conclusion on Article 8(5) EUTMR

Considering all the above, the opposition is well founded on the basis of earlier Italian trade mark registration No 1 308 969 ‘THUN’ invoked under Article 8(5) EUTMR insofar as it is directed against rental of lighting apparatus in Class 43.

Therefore, the contested trade mark must be rejected under Article 8(5) EUTMR for the above mentioned services.

The opposition is not successful insofar as the remaining contested goods, namely shining preparations for fruits, and all the contested services in Class 35 are concerned.

COSTS

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

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

The Opposition Division

Nicole CLARKE

Zuzanna STOJKOWICZ

Cynthia DEN DEKKER

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.