OPPOSITION Nо B 3 073 413

 

Polski Koncern Naftowy Orlen S.A., Chemików 7 street, 09-411 Płock, Poland (opponent), represented by Monika Kaczmarska, ul. Chemików 7, 09-411 Płock, Poland (professional representative) 

 

a g a i n s t

 

Evolution RC Ltd T/A Powerenhancer, Unit 14 Rookery Business Park Silver Street, Besthorpe, Attleborough NR17 2LD, United Kingdom (applicant), represented by Murgitroyd & Company, 17 Lansdowne Road, Croydon CR0 2BX, United Kingdom (professional representative).

On 29/03/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 073 413 is upheld for all the contested goods.

 

2.	European Union trade mark application No 17 965 617 is rejected in its entirety.

 

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

 

REASONS

 

On 15/01/2019, the opponent filed an opposition against all the goods of European Union trade mark application No 17 965 617 ‘oilem’ (word mark). The opposition is based on, inter alia, European Union trade mark registration No 3 795 218 ‘ORLEN' (word mark). The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

For reasons of procedural economy, the Opposition Division finds it appropriate to start the assessment of the opposition on the basis of the earlier EUTM No 3 795 218 ‘ORLEN' (word mark) and on the ground of Article 8(5) EUTMR.

 

PROOF OF USE AND REPUTATION

 

Proof of use

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

 

The same provision states that, in the absence of such proof, the opposition will be rejected.

 

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely the word mark ‘ORLEN’.

 

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

 

The date of filing of the contested application is 08/10/2018. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 08/10/2013 to 07/10/2018 inclusive.

 

Furthermore, the evidence must show use of the trade mark  for the goods and services on which the opposition is based (under the ground of Article 8(5) EUTMR), namely the following:

 

Class 4: Fuels, liquefied petroleum gases, gasoline, diesel oils, fuel oils, industrial oils, motor oils.

Class 37: Running fuel stations services (refuelling and maintenance); refuelling of land vehicles.

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

 

On 09/09/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 14/11/2019 to submit evidence of use of the earlier trade mark. On 14/01/2020, within the time limit extended until 14/01/2020, the opponent submitted evidence of use.

Even before that date, namely on 11/06/2019, the opponent submitted evidence to prove reputation of the earlier trade mark, which must also be examined as proof of use. This is because any evidence that has been submitted by the opponent at any time during the proceedings before the expiry of the time limit for providing proof of use, even before the applicant’s request for proof of use, has to be automatically taken into account when assessing proof of use.

The evidence submitted on 11/06/2019 is the following:

 Exhibit 1:

- ranking of 500 biggest Polish companies in 2011 by Polityka weekly, with PKN Orlen SA in the first position;

- ranking of 500 biggest Polish companies in 2012 Polityka weekly, with PKN Orlen SA in the first position;

- press release of Deloitte concerning the ‘CE TOP 500’ ranking for 2014, mentioning inter alia: ‘For another year in a row, PKN Orlen is the undisputed leader in term of revenues among the largest companies in Central Europe…’.

- press article re. Forbes list on the ranking of 100 richest and biggest Polish companies, with PKN Orlen SA in the first position, dated 2014;

- press article re. ‘Coface TOP 500 CEE’ ranking of the biggest companies in Central and Eastern Europe, with PKN Orlen SA in the first position, referring to the year 2016;

- the ranking of 200 biggest Polish companies in 2019 by Wprost weekly, mentioning inter alia: ‘For another year in a row, PKN Orlen appeared in the first place. For the first time in five years, the revenues of our fuel giant exceeded the magical barrier of PLN 100 billion in revenues’. PKN Orlen is mentioned as belonging to the ‘fuel and energy’ branch, and the position from 2018 is also mentioned (1^st place).

The documents are in Polish, accompanied by English translations.

 Exhibit 2: examples of awards granted to PKN ORLEN S.A., inter alia the award of the biggest company in Poland for 2002, 2004, 2006, 2010 and 2011; confirmation of award ‘the Star of the New Europe’ granted in 2006.

 Exhibit 3:

- excerpts from the opponent’s Integrated Report 2017, in English. It is mentioned, inter alia, that ‘As at the end of 2017, the ORLEN Group had a network of 1.776 service stations on the Polish market (approximately 27% of all stations in the country)’; it is also mentioned that the share of the ORLEN Group in the retail fuel market in Poland was 34% in 2017.

- printout from the opponent’s website concerning the company, dated in January 2019. It is mentioned, inter alia, that ‘PKN ORLEN has also been named the most valuable Polish brand … For years now, we have led the list of largest Polish companies …’.

- printout from the opponent’s website concerning the company’s strategy,

- five printouts from the opponent’s website concerning the company’s operation in Europe, namely Poland, Czech Republic, Lithuania and Germany

 Exhibit 4:

- press article ‘Orlen among world’s giants’ (Bankier.pl), 2014;

- press article ‘Not only a petrol station’ (Puls biznesu), 2011;

- press article ‘Orlen extends its shares in the retail market in the Czech Republic’ (‘Petrol Station’ magazine), 2016;

- press release ‘The PKN ORLEN refinery is the best in the Central and Eastern Europe’ (www.orlen.pl), 2005;

- press article ‘Orlen as the winner of the Central Europe Giants ranking’ (Puls Biznesu), 2006;

- press article ‘The most successful companies’ (zlotefirmy.pl), 2014;

- press release ‘Orlen on the 1^st place of the List 1000’ (www.orlen.pl), 2005;

- press article ‘500 biggest companies in Central and Eastern Europe’ (Dziennik Gazeta Prawna), 2013;

- Superbrands catalogue and article re. Superbrands organization (www.superbrands.pl);

- map showing the range of ORLEN petrol station network in Poland.

The documents are in Polish, accompanied by English translations.

 Exhibit 5: S&P Global Platts TOP 250 Global Energy Rankings – information re. 2010‐2014 and 2016-2018 (www.top250.platts.com).

 Exhibit 6: several photos of petrol stations run within the ORLEN petrol station network.

 Exhibit 7:

- ‘Brand Barometer’ survey conducted in October 2011 by GfK Polonia;

- ‘U&A’ research conducted by GfK Polonia in June 2010;

- ‘U&A’ research conducted by GfK Polonia in February 2009;

- affidavit.

 Exhibit 8: summary of brand awareness reports including:

- Pentor RI ‘Corporate Image’ report 2008‐2011,

- Pentor RI ‘Corporate Image’ report 2000‐2011,

- GfK Polonia ‘U&A’ 2007‐2011,

- GfK Polonia ‘Brand Barometer’ 2009‐2011,

- GfK Polonia ‘Fuel quality’ 2007‐2011,

- GfK Polonia ‘Fuel quality’ 2003‐2011,

- GfK Polonia ‘U&A’ 2008‐2011,

- GfK Polonia ‘U&A’ 2006‐2011,

- GfK Polonia ‘U&A’ 2011,

- ‘ORLEN Brand Barometer 2011’.

 Exhibit 9: ‘ORLEN Brand Barometer’ 2014 by GfK Polska showing that in December 2013, 62% of Polish drivers used the ‘ORLEN’ petrol station for refueling in the last month.

 Exhibit 10: ‘Condition of the concern’s brands’ by GfK from October 2015. It is shown that in October 2015, the awareness of ‘ORLEN’ petrol stations among Polish drivers was between 89% (spontaneous) and 100% (prompted).

 Exhibit 11:

- ‘ORLEN Brand Barometer’ by GfK Polonia from February 2017. The awareness of ‘ORLEN’ petrol stations among Polish drivers was between 88% (spontaneous) and 100% (prompted).

- ‘ORLEN Brand Barometer’ October 2017.

 Exhibit 12: report conducted by OnBoard PR Ecco Network in 2008.

 Exhibit 13: Reader’s Digest Trusted Brand awards for 2004, 2006, 2007, 2009, 2010, 2012.

 Exhibit 14:

- photos of awards granted by Rzeczpospolita to PKN ORLEN for the most valuable Polish brand in 2008‐2014;

- press article ‘Report of the most valuable Polish brands. Orlen as a leader, castling in further positions’ (Rzeczpospolita), 2015;

- press article ‘Rzeczpospolita: ORLEN as a most valuable Polish brand’ (Energetyka24), February 2018.

The articles are in Polish, accompanied by English translations.

 Exhibit 15: photos of awards granted to PKN ORLEN S.A. by Euromoney in 2010 and 2011.

 Exhibit 16:

- photo of award ‘Petrol Station of the Year’ granted to PKN ORLEN S.A. in 2012;

- press article re. the award granted to PKN ORLEN S.A. in the ‘Petrol Station of the Year’ competition in 2014.

 Exhibit 17: examples of awards granted to PKN ORLEN S.A.:

- The Brand of High Reputation in Business 2008,

- Ambassador of Polish Economy 2010,

- the Leader of Responsible Business 2011,

- Stevie award 2011,

- Service Quality Star 2013,

- Top Employers 2012‐2016,

- Fleet Awards 2013.

 Exhibit 18: press article ‘Consumer Laurel and Fleet Market Builder statuette’ (www.paliwa.pl), 2009.

 Exhibit 19: press article re. ORLEN as the most valuable Polish brand (Rzeczpospolita), 2011.

 Exhibit 20: press article ’Award for the quality of service’ (Stacja Benzynowa), 2012.

 Exhibit 21: ranking of Polish Brands (Rzeczpospolita) 2013.

 Exhibit 22: judgment of the Supreme Administrative Court of February 2008, II GSK 359/07.

 Exhibit 23: ORLEN Fact Book 2013.

 Exhibit 24: Consolidated Report 2014 (www.raportzintegrowany.orlen.pl).

 Exhibit 25: Consolidated Report 2015 (www.raportzintegrowany2015.orlen.pl)

 Exhibit 26: Consolidated Report 2016 (www.raportzintegrowany2016.orlen.pl)

 Exhibit 27: Consolidated Report 2017 (www.raportzintegrowany2017.orlen.pl/en-2017)

 Exhibit 28: Printout from www.orlen.pl website – information re. strategy of PKN ORLEN S.A.

 Exhibit 29:

- printout from the opponent’s website concerning the ORLEN Group structure,

- printout from the opponent’s website concerning the ORLEN Group’s products,

- printout from ORLEN Oil’s website, being the part of the ORLEN Group structure (http://www.orlenoil.pl),

- nine printouts from ORLEN Oil’s website showing examples of the products.

 Exhibit 30: report of advertising expenses undertaken by the opponent between January 2007 and December 2011, prepared by Kantar Media media house (previously Expert Monitor).

 Exhibit 31: report of advertising expenses undertaken by the opponent between January 2012 and December 2017, prepared by Kantar Media media house.

 Exhibit 32: numerous photographs and scans of promotional campaigns, materials and advertising banners, showing the earlier word mark and figurative mark in relation to fuels and petrol stations.

 Exhibit 33: further numerous photographs and scans of promotional campaigns, materials and advertising banners, showing the earlier word mark and figurative mark in relation to fuels and petrol stations.

 Exhibit 34:

- printout from the opponent’s website concerning the ORLEN Team;

- several exemplary newspapers clippings confirming the participation of the ORLEN Team in Dakar Rally in years 2009‐2013.

 Exhibit 35:

- printout from the official Verva Street Racing website;

- several exemplary photographs of the event, advertising banners and promotional materials.

 Exhibit 36:

- printout from Wikipedia concerning ORLEN Warsaw Marathon event, mentioning the years 2013-2017;

- several exemplary photographs of the event and advertising banners;

- three scans of ORLEN Warsaw Marathon promotional pamphlets.

 Exhibit 37: exemplary photos of awards and acknowledgments for supporting of Polish sport.

Practically all the documents show that the place of use is Poland, which is a substantial part of the territory of the European Union. This can be inferred from the language of the documents (Polish), the currency mentioned (Polish złoty) and numerous references to Poland as a country or to various Polish towns. Therefore, the evidence relates to the relevant territory.

Although there are numerous pieces of evidence that pre-date the relevant period, there is still enough evidence on file that is dated within the relevant period.

 

The documents filed, for example the rankings, the articles from press, the Brand Barometer reports or the excerpt from the Integrated Report 2017, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

 

The evidence shows that the mark has been used in accordance with its function and as registered (i.e. as the word ‘ORLEN’) as a house brand of the opponent. Apart from that, the evidence also demonstrates the use of the opponent’s figurative mark .

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

 

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory at least for fuels in Class 4 and running fuel stations services (refuelling and maintenance) in Class 37.

For reasons of procedural economy, it is not necessary to examine whether there was genuine use also for the other goods and services invoked in these proceedings. Likewise, it is not necessary to examine the additional proof of use submitted by the opponent on 14/01/2020 because the evidence submitted on 11/06/2019 is already sufficient to prove genuine use of the aforementioned goods and services.

Reputation 

According to the opponent, the earlier trade mark has a reputation in the European Union.

 

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 08/10/2018. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, and for which it proved genuine use, namely:

 

Class 4: Fuels.

Class 37: Running fuel stations services (refuelling and maintenance).

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.

The evidence submitted by the opponent on 11/06/2019 to prove reputation has already been listed above.

 

It is clear from the evidence that the earlier trade mark has been subject to long-standing and intensive use and is generally known in the relevant market in Poland, where it enjoys a consolidated position as the leading brand, as has been attested by diverse independent sources. The brand awareness surveys and reports, the rankings, the numerous awards received by the opponent or the various references in the press to its success all unequivocally show that the mark enjoys a very high degree of recognition among the public in Poland.

According to the Court,

a [European Union] trade mark must be known by a significant part of the public concerned by the products or services covered by that trade mark, in a substantial part of the territory of the [European Union], and that, in view of the facts of the main proceedings, the territory of the Member State in question may be considered to constitute a substantial part of the territory of the [Union].

(06/10/2009, C‑301/07, Pago, EU:C:2009:611).

In view of the circumstances of the present case, the Opposition Division considers that the territory of Poland, where reputation was proven, can be considered to constitute a substantial part of the European Union due to the large size of the country and its population. Consequently, the applicant’s criticism that reputation is limited only to Poland must be dismissed.

The applicant also argued that the reputation claimed by the opponent was not illustrated by the evidence which had been submitted. According to the applicant, the evidence submitted consists mostly of marketing materials issued by the opponent. The Opposition Division cannot agree with these assertions. There are many more pieces of evidence on file than just marketing materials issued by the opponent, for example the rankings, articles from press, evidence of various awards, awareness reports or overview of advertising expenditures, all stemming from third parties. Consequently, the applicant’s argument must be dismissed.

It transpires from the evidence that the earlier trade mark enjoys reputation at least for fuels in Class 4 and running fuel stations services (refuelling and maintenance) in Class 37. For reasons of procedural economy, it is not necessary to examine whether the earlier trade mark enjoys reputation also for the other goods and services invoked in these proceedings.

The applicant argued that at most, the earlier mark was reputed only for the operation of vehicle refueling stations. According to the applicant, this does not in any way transmit to a reputation with respect to goods and services other than vehicle refueling stations and in particular the types of additives covered by the application. Contrary to the applicant’s arguments, the Opposition Division considers that the evidence proves reputation not only for the services of refueling stations but also for fuels as goods in Class 4. This is because the evidence clearly proves that the opponent produces fuels in its refineries and sells them through its refueling stations. The applicant is correct that no reputation was proven for the types of additives covered by the application. This is simply because reputation was not claimed at all for these additives but only for the goods and services covered by the earlier mark (not including any such additives).

The finding of reputation in this case is in line with the previous opposition decision of 21/09/2018 in case B 2 931 668, confirmed by the decision of the Boards of Appeal in case 01/07/2019, R 2278/2018-2, Oilen / Orlen et al., p. 27, where a very similar set of evidence proving reputation of the same earlier trade mark was examined.

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 mark

  

The reputation of the earlier mark has already been assessed above. It has been found that the earlier trade mark enjoys a very high degree of reputation at least for fuels in Class 4 and running fuel stations services (refuelling and maintenance) in Class 37.

   

b) The signs

 

ORLEN	oilem
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

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

Given that the earlier trade mark is reputed in Poland and that the marks bear no meaning for the major part of the Polish public, the Opposition Division finds it appropriate to focus the comparison of the signs on the Polish-speaking consumers in the EU.

Although some Polish consumers could perceive the allusion to an ‘eagle‘ in ‘ORLEN‘ and to the English word ‘oil‘ in ‘oilem‘, for the greater part of the relevant public these elements have no meaning and are, therefore, distinctive. The assessment of the opposition will hereinafter focus on this part of the public.

The applicant claimed that according to the print-out from the opponent’s own website, the ‘ORLEN’ name was derived from ‘ORL-’ for ‘orzel’ (‘eagle’ in Polish) and ‘-EN’ for ‘energia’ (‘energy’ in Polish). However, the sequences of letters ‘ORL-’ and ‘-EN’ in ‘ORLEN’ are relatively far removed from the respective Polish words ‘orzel’ and ‘energia’. Moreover, the relevant consumer will not be aware of the intentions or ideas that led the creator of the sign ‘ORLEN’ to design it. As mentioned above, when perceiving the sign ‘ORLEN’, the greater part of the relevant public will not grasp any meanings or allusions in the signs.

The applicant also claimed that the public in the whole European Union would understand the word ‘OIL‘ in the contested sign ‘oilem‘ and that the English speakers would perceive the whole sign as the expression ‘oil’em’, i.e. ‘oil them’. However, as already mentioned above, although a part of the Polish consumers might perceive the English word ‘oil‘ in ‘oilem‘, the greater part of the relevant public will not do so (the relevant Polish equivalent, ‘ropa‘, being totally different). Moreover, the finding that ‘oilem’ will be meaningless for the greater part of the relevant Polish public is consistent with the findings of the Boards of Appeal in the above-mentioned decision R 2278/2018-2, p. 28 in relation to the mark ‘OILEN’.

The fact that the earlier trade mark is depicted in upper case and the contested sign in lower case has no bearing on the comparison of the marks, because both are word marks. Protection is therefore granted/sought for the word itself, and not for the particular way in which the mark is written.

Visually, the signs coincide in ‘O*LE*’ and differ in the second letter ‘R’ vs ‘I’ and the last letter ‘N’ vs ‘M’. Nevertheless, despite their differences, the letters ‘N’(‘n’) and ‘M’(‘m’) do have some visual similarity, both when written in upper case or in lower case. The marks also have the same structure, namely one word, and have the same length (five letters).

Therefore, the signs are visually similar to an average degree and cannot be considered visually dissimilar, as argued by the applicant.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘O*LE*’, present identically in both signs. The pronunciation differs in the sound of the second letter ‘R’/‘I’ and the last letter ‘N’/‘M’ (which nevertheless sounds quite similar). Despite the addition of another vowel in the contested sign, the marks still have a similar rhythm and intonation.

Therefore, the signs are aurally similar to an average degree and cannot be considered aurally dissimilar, as argued by the applicant.

Conceptually, neither of the signs has a meaning for the major part of the relevant public. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs. Contrary to the applicant’s assertions, for the major part of the Polish-speaking public there are no immediate and apparent conceptual differences between the marks.

In view of all the above findings, the marks are similar overall.

  

c) The ‘link’ between the signs

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

 

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

 

 the degree of similarity between the signs;

 

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

 

 the strength of the earlier mark’s reputation;

 

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

 

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

 

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

In the present case, it has been found that the marks are visually and aurally similar to an average degree and a conceptual comparison is not possible. It is considered that overall, the marks have a solid degree of similarity.

The earlier trade mark ‘ORLEN‘ has no meaning for the major part of the relevant public and is, therefore, inherently distinctive to an average degree. In addition, it has been proven that the earlier trade mark enjoys a very high degree of reputation.

The reputation was proven for fuels in Class 4 and running fuel stations services (refuelling and maintenance) in Class 37.

The opposition is directed against the following goods:

 

Class 1: Fuel additives (chemical -); chemical additives for fuel; additives (chemical -) for fuels; detergent additives for fuels; fuel injection cleaner chemical additive; octane booster fuel chemical additive; chemical additives to motor fuel; motor fuel (chemical additives to -); additives, chemical, to motor fuel; chemical compound additives for fuel; chemical additives for fuel treatment; chemical additives for motor fuel; chemical additives for motor fuels; chemical additives for diesel fuels; additive concentrates (chemical -) for motor fuels; anti-freezing additives (chemical -) for fuels; chemical additives for fuel injection system cleaners; combusting preparations [chemical additives to motor fuel]; additives for raising the cetane number of diesel fuel; chemical additives for use in the production of fuels; chemical additives for use with internal combustion engine fuels; chemical additives for use in fuels to inhibit corrosion; chemical preparations for use as additive to fuels for combatting pollution; chemical preparations for use as additive to fuels for improving combustion; detergent additives for lubricants; chemical additives for lubricants; chemicals in the form of water soluble lubricants; chemical products for addition to lubricants for decarbonising; chemical additives for use in the production of lubricants.

Class 4: Non- chemical fuel additives; non-chemical additives for fuels; additives (non-chemical -) for fuels; motor fuel (additives, non-chemical, to -); additives, non-chemical, to motor-fuel; additives, non-chemical, to motor fuel; non-chemical additives for motor fuels; anti-freezing additives (non-chemical -) for fuels; additives (non-chemical -) for fuels to prevent combustion chamber deposits; lubricants; graphited lubricants; graphite lubricants; industrial lubricants; metalworking lubricants; automobile lubricants; solid lubricants; cable lubricants; drilling lubricants; synthetic lubricants; automotive lubricants; lubricants for machines; oil based lubricants; spray-on lubricants; all purpose lubricants; lubricants for cables; motor vehicle lubricants; lubricants for aircraft engines; lubricants for metal working; lubricants for metallic surfaces; lubricating oils [industrial lubricants]; oil well drilling lubricants; lubricants for industrial apparatus; lubricants for industrial machinery; lubricants being gear oils; lubricants having cleaning properties; lubricants for surgical apparatus; lubricants of synthetic origin; lubricants for motor vehicles; lubricants for agricultural implements; lubricants for polymeric surfaces; lubricants containing low friction additives; automotive lubricants for car engines; solid lubricants for industrial purposes; industrial oils and greases, lubricants; non-chemical additives for lubricants; additives (non-chemical -) for lubricants; additive concentrates (non-chemical -) for lubricants; lubricants for use on wire ropes; synthetic lubricants in the form of aerosols; lubricants for the protection of the chains of chainsaws; non-chemical additives to organic working fluids to act as in-situ lubricants.

All the above contested goods in Classes 1 and 4 are various types of petrochemical products, and many of them are even directly related to fuels or motor vehicles (in which fuels are combusted). Consequently, it is considered that all the contested goods are linked by their nature to the opponent’s reputed goods and services because they all fall in the petrochemical field or revolve around fuels or motor vehicles. Admittedly, some of the contested goods show a stronger link than others but it is considered that there is at least some link for all the contested goods.

Therefore, taking into account and weighing up all the relevant factors of the present case, it must be concluded that, when encountering the contested mark, the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 96).

 

d) Risk of injury

 

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

 

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

 

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

 

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

 

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

 

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

 

The opponent claims, among other things, that the contested sign would benefit from the reputation of the earlier trade mark. The image of reputation of the earlier mark would be transferred to the contested sign and the marketing of the goods sold under this sign would thus be made easier.

In other words, the opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark in the form of free-riding.

 

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).

 

According to the Court of Justice of the European Union

 

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

 

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 36.)

In the circumstances of the present case, it is considered that the contested sign would indeed benefit from the reputation of the earlier trade mark. The goods sold under the contested sign would be made more attractive for the consumers through the association with the earlier reputed trade mark. The contested sign would thus unfairly exploit the reputation of the earlier mark built through the efforts of the opponent.

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

 

f) Conclusion

 

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods.

 

Given that the opposition is entirely successful under Article 8(5) EUTMR, it is not necessary to examine the remaining ground and earlier right on which the opposition was based. Likewise, it is not necessary to asses other types of injury claimed by the opponent.

 

COSTS

 

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

 

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

 

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

 

 

 

The Opposition Division

 

Kieran HENEGHAN

Vít MAHELKA

Anna ZIÓŁKOWSKA

 

 

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.