OPPOSITION Nо B 3 087 483

OPPOSITION DIVISION

OPPOSITION Nо B 3 087 483

Posti Group Oyj, Postintaival 7 A, 00230 Helsinki, Finland (opponent), represented by Heinonen & Co, Fabianinkatu 29 B, 00100 Helsinki, Finland (professional representative)

a g a i n s t

Postnet International Franchise Corporation, 143 Union Boulevard, Suite 600, 80228 Lakewood, United States of America (applicant), represented by Barzano’ & Zanardo Milano S.p.A., Via Borgonuovo, 10, 20121 Milan, Italy (professional representative).

On 28/07/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 087 483 is partially upheld, namely for the following contested goods and services:

Class 16: All the contested goods in this class.

Class 35: All the contested services in this class.

Class 38: All the contested services in this class.

Class 39: All the contested services in this class.

Class 40: All the contested services in this class.

Class 41: All the contested services in this class except language translation services.

Class 42: All the contested services in this class.

Class 45: All the contested services in this class.

2. European Union trade mark application No 18 020 313 is rejected for all the above goods and services. It may proceed for language translation services in Class 41.

3. Each party bears its own costs.

REASONS

On 28/06/2019, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 020 313 (figurative mark). The opposition is based on Finnish trade mark registrations No 269 485 ‘POSTI’ (word mark) and No 262 495 (figurative mark), in relation to which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR; as well as on European Union trade mark registration No 13 667 167 ‘POSTINEN’ (word mark) and Finnish trade mark registration No 257 862 ‘NETPOSTI’, in relation to which only Article 8(1)(b) EUTMR was invoked.

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:

 Finnish trade mark registration No 269 485 ‘POSTI’ (earlier mark 1)

Class 16: Paper, cardboard; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks; document holders [stationery]; folders; printed timetables; almanacs; calendars; post cards and greeting cards; magazines and books; paper and cardboard materials for packaging or wrapping; bubble packs (plastic -) for wrapping or packaging; plastic film for wrapping; bags of paper or plastics, for packaging; packaging material made of starches; post packages of cardboard; franking machines for office use; prospectuses; hand labelling appliances; directories; clipboards; dispensers (adhesive tape -) [office requisites]; graphic reproductions; posters; wrapping paper; atlases; maps; trading cards other than for games; bookmarkers; books; bookends; envelope sealing machines, for offices; envelopes; writing or drawing books; elastic bands for offices; pen clips; pencil sharpeners, electric or non-electric; chalks and pens; boxes of cardboard or paper; document laminators for office use; paper knives [office requisites]; sealing stamps; stamps [seals] (cases for -); inking pads; adhesives for stationary or household purposes; forms, printed; catalogues; document files; tickets; mimeograph apparatus and machines; note pads; inkwells; dockets, address cards and labels, not of textile; stapling presses [office requisites]; numbering apparatus; addressing machines; address stamps; address plates for addressing machines; paper clasps; paper ribbons; sealing wafers; post cards; stamps; stationery (cabinets for -) [office requisites]; seals [stationery]; sealing machines for offices; sealing stamps; sealing wax; self-adhesive tapes for stationery or household purposes; cardboard articles; adhesive tapes for stationery or household purposes; office perforators; bar code ribbons of paper; letter trays; electric letter openers; loose-leaf binders; all of the foregoing goods in class 16 excluding repositionable adhesive stationery products and any product containing repositionable adhesives.

Class 35: Advertising; business management; business administration; office functions; book-keeping and accounting; commercial information and advice for consumers [consumer advice shop]; collections and delivery of customer feedback information; cost price analysis; invoicing; invoicing services, namely sending and receiving of electric invoices; preparation, scanning, and delivery of invoices; drawing up statements of account; business auditing; personnel management consultancy; personnel recruitment; administration of business payroll and accounting for others; accounting; payroll calculation and payroll preparation; reporting relating to business finance and payroll administration; import-export agency services; economic forecasting; news clipping services; business appraisals; business efficiency expert services; compilation of information into computer databases; systemization of information into computer databases; computerized file management; compilation of statistics; office machines and equipment rental; outsourcing services [business assistance]; procurement services for others [purchasing goods and services for other businesses]; administrative processing of purchase orders; ordering services for third parties relating to magazines and other goods delivered by mail; photocopying services; compilation and systemization of documents; supply chain management services; management of contact information data and directories for others; retail sale of packaging material, printed matter, office and mailing requisites and equipment; retail sale of software relating to customer marketing, communication, logistics, business finance administration and accounting; distribution of samples; bill sticking; receiving and administrating purchase orders for others; provision and rental of advertising space and time; distributing advertising and marketing materials; market research; marketing research; opinion polling; consumer research; marketing analysis services; sales promotion for others; planning of marketing strategy and marketing operations for others; advertising by mail order; telemarketing services; direct mail advertising; direct marketing; collection, compilation and systemization of market information, consumer information, target group information and address information; electronic directory and search services in the internet; electronic collection of commercial and statistical data; consultation relating to afore mentioned services.

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; stamp appraisal; collection of payments; electronic payment processing; customs clearance services; banking services; rental of business premises, real estate and apartments; apartment house management; consultation relating to afore mentioned services.

Class 37: Construction; postage stamp restoration; replacement of lights; window cleaning; installation and repair of domestic appliances and washing machines; cleaning of textile; cleaning of clothing; cloth ironing; clothing repair; cleaning services; building maintenance and repair; snow removal; pest control; consultation relating to afore mentioned services.

Class 39: Transport; packaging and storage of goods; travel arrangement; freight transportation and forwarding services; storage (physical -) of electronically-stored data or documents; filing documents [storage]; storage of recording disks and equipment; storage of mail consignments; post office services; delivery of mail; receiving, assorting, packing, covering and sending mail; receiving, assorting, packaging and sending letters and other documents; tracking consignments and deliveries; rental of transportation equipment; rental of post boxes and transportation material; sorting and packaging of marketing material; arranging of passenger transport; haulage services, car park services, rental of parking space; consultation relating to afore mentioned services.

Class 40: Digital printing services; document printing; printing of marketing material; printing of address cards and labels; printing of stamps; pretreatment of paper and electronic files for printing and scanning; document destruction; printing; printing of invoices; 3 D reproduction services; customized production of materials for others; needlework and dressmaking; contract manufacturing services; assembly of products for others; customized modification work for clothing; chemical treatment of textile; cloth dyeing; applying finishes to clothing; waterproofing treatment for textiles; waste management services [recycling]; consultation relating to afore mentioned services.

Class 41: Entertainment; sporting and cultural activities; museums; museum facilities (providing -) [presentation, exhibitions]; cultural, entertainment and sport events; electronic desktop publishing; publishing; consultation relating to afore mentioned services.

Class 42: Scientific services and research and design relating thereto; Industrial analysis and research services; digitization of documents [scanning]; data conversion of computer programs and data [not physical conversion]; conversion of data or documents from physical to electronic media; scanning of documents; recording and transfer of files and electronic documents to recording discs, microfilms or other recording media; managing websites; creation and maintenance of web sites for third parties; design and development of e-commerce websites; hosting, administration and rental of servers; administration of internet search engines; providing search engines for the internet; electronic storage of documents; consultation relating to website design; consultation relating to aforementioned services.

Class 43: Services for providing food and drink; temporary accommodation; nurseries, day-care and elderly care facilities; catering services for the provision of food; personal chef services; consultation relating to aforementioned services.

Class 44: Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services; advice relating to the personal welfare of elderly people [health]; maintaining personal medical history records and files; consultation relating to aforementioned services.

Class 45: Legal services; security services for the protection of property and individuals; providing authentication of personal identification information [identification verification services]; personal shopper services; guard services; house sitting services; dog walking services; babysitting services; services relating to lost and found items; consultation relating to aforementioned services.

 Finnish trade mark registration No 262 495 (earlier mark 2)

Class 4: Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting.

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; food for babies; dietary supplements for humans and animals; plasters, materials for dressings; teeth filling material and dental impression materials; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Class 6: Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; ores; metal post and letter boxes; metal nameplates and door nameplates.

Class 7: Stamping machines; machine tools; motors, other than for land vehicles; coupling and transmission components (except for land vehicles); agricultural implements, other than hand-operated; incubators for eggs; vending machines; mail parcel machines for sending and receiving mail.

Class 8: Hand tools and implements (hand-operated); cutlery; side arms; razors.

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, dvds and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; computer programs; computer operating programs, recorded; computer software for enterprise resource planning systems; computer software for order and supply systems; computer software for storage systems; electric invoicing software; software for billing, book keeping, business financial administration and payroll administration; software for document management; mobile applications software; internet application software for use in designing, administrating and delivering targeted print, e-mail and text message campaigns; computer peripheral devices; computer servers; online electronic mail archive; apparatus for handling mail, namely scanning, verifying and weighing apparatus for mail; apparatus for sorting, checking and supervision of mail; observation instruments; apparatus to check stamping mail; ticket dispensers; letter scales; electronic publications, downloadable; electronic post, video and audio cards; encoded magnetic cards; chip cards; downloadable ringtones for mobile phones; mouse mats; decorative magnets; telecommunication apparatus; readers [data processing equipment]; bar code readers; magnetic encoders and readers; electronic notice boards; recorded media content; all of the foregoing goods in class 9 excluding electronic repositionable notes (electronic sticky notes) which mimic repositionable and self-adhesive paper notes.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 12: Vehicles; apparatus for locomotion by land, air or water.

Class 14: Precious metals and their alloys; jewellery, precious stones; horological and chronometric instruments.

Class 16: Paper, cardboard; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks; document holders [stationery]; folders; printed timetables; almanacs; calendars; post cards and greeting cards; magazines and books; paper and cardboard materials for packaging or wrapping; bubble packs (plastic -) for wrapping or packaging; plastic film for wrapping; bags of paper or plastics, for packaging; packaging material made of starches; post packages of cardboard; franking machines for office use; prospectuses; hand labelling appliances; directories; clipboards; dispensers (adhesive tape -) [office requisites]; graphic reproductions; posters; wrapping paper; atlases; maps; trading cards other than for games; bookmarkers; books; bookends; envelope sealing machines, for offices; envelopes; writing or drawing books; elastic bands for offices; pen clips; pencil sharpeners, electric or non-electric; chalks and pens; boxes of cardboard or paper; document laminators for office use; paper knives [office requisites]; sealing stamps; stamps [seals] (cases for -); inking pads; adhesives for stationary or household purposes; forms, printed; catalogues; document files; tickets; mimeograph apparatus and machines; note pads; inkwells; dockets, address cards and labels, not of textile; stapling presses [office requisites]; numbering apparatus; addressing machines; address stamps; address plates for addressing machines; paper clasps; paper ribbons; sealing wafers; postcards; stamps; stationery (cabinets for -) [office requisites]; seals [stationery]; sealing machines for offices; sealing stamps; sealing wax; adhesive tapes for stationery or household purposes; cardboard articles; adhesive tapes for stationery or household purposes; office perforators; bar code ribbons of paper; letter trays; electric letter openers; loose-leaf binders; all of the foregoing goods in class 16 excluding repositionable and self-adhesive stationery products and any product containing repositionable adhesives.

Class 17: Rubber, gutta-percha, gum, asbestos, mica; plastics in extruded form for use in manufacture; packing and insulating materials; flexible pipes, not of metal; adhesive materials in the form of strips [other than for household, medical and stationery use].

Class 18: Leather and imitations of leather; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery; bags.

Class 19: Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.

Class 20: Furniture, mirrors, picture frames; decorative articles of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics; non-metallic name tags; non-metallic house numbers; display stands; bulletin boards [other than electronic]; assembled exhibition stands; advertising display boards; non-metallic number plates; non-metallic name plates; newspaper display stands; display stands for merchandise.

Class 21: Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.

Class 22: Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.

Class 24: Textiles and textile goods, not included in other classes; bed covers; table covers.

Class 25: Clothing, footwear, headgear.

Class 26: Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.

Class 27: Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

Class 33: Alcoholic beverages (except beer).

Class 34: Tobacco; smokers’ articles; matches.

Class 37: Building construction; repair and installation of mail boxes, vehicles, transportation equipment, computer devices and telecommunications equipment; restoration of stamps.

Class 38: Telecommunications; providing access to internet portal for design, administration and sending of targeted print, electronic mail and text message campaigns; providing access to databases; providing access to internet portal for purchase orders ; providing online ordering and delivery internet portal; providing online operation control system in the internet used for transmission of information between trading partners; data transmission; electronic data transmission; wireless digital messaging services; voice mail services; mobile telephone communication; telephone services; transmission of digital files; transmission of messages; transmission of electronic post cards, video cards and sound cards; e-mail services; rental of telecommunication equipment; providing electronic mail box and mail archive in the internet; consultation relating to aforementioned services.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; museums; museum facilities (providing -) [presentation, exhibitions]; cultural, educational, entertainment and sport events; electronic desktop publishing; publishing; consultation relating to afore mentioned services.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; digitization of documents [scanning]; data conversion of computer programs and data [not physical conversion]; conversion of data or documents from physical to electronic media; scanning of documents; recording and transfer of files and electronic documents to recording discs, microfilms or other recording media; renting of computer software; managing websites; creation and maintenance of web sites for third parties; design of systems and solutions relating to postal services, communication and logistics; design and development of e-commerce websites; hosting, administration and rental of servers; administration of internet search engines; providing search engines for the internet; software as a service [SaaS]; electronic storage of documents; consultation relating to website design; consultation relating to aforementioned services.

Class 43: Services for providing food and drink; temporary accommodation; consultation relating to aforementioned services.

Class 44: Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services; consultation relating to aforementioned services.

Class 45: Legal services; security services for the protection of property and individuals; consultation relating to aforementioned services.

 Finnish trade mark registration No 257 862 ‘NETPOSTI’ (earlier mark 3)

Class 35: Electronic archiving of electronic document files.

Class 38: Receiving, sending and forwarding electronic document files relating to electronic commerce and communications; transmission of electronic document files relating to electronic payment of invoices.

 EUTM registration No 13 667 167 ‘POSTINEN’ (earlier mark 4)

Class 16: Paper; cardboard; printed matter; paper and cardboard materials for packaging or wrapping.

Class 35: Advertising; commercial information and advice for consumers [consumer advice shop]; outsourcing services [business assistance]; ordering services for third parties relating to magazines and other goods delivered by mail; supply chain management services; distributing advertising and marketing materials; direct mail advertising; collection, compilation and systemization of market information, consumer information, target group information and address information; consultation relating to afore mentioned service.

Class 39: Transport; delivery of mail; receiving, assorting, packing, covering and sending mail; tracking consignments and deliveries; sorting and packaging of marketing material; consultation relating to afore mentioned services.

The contested goods and services are the following:

Class 16: Packaging supplies, namely, corrugated cardboard boxes, wrapping paper, paper adhesive tape, envelopes, padded envelopes, markers, felt tip markers, plastic bubble packs, stamp dispensers, and address labels; office supplies; cardboard shipping containers; mail pouches; mailing tubes; shipping labels; sealing tape; pens; pencils; paper; notebooks; file folders; files; computer paper; computer ribbons; greeting cards.

Class 35: Business administration services for others; office administration services for others; office function services for others; copying, duplicating, digital copying, scanning, and document services; secretarial services; word processing services; electronic commerce services, namely providing information products via telecommunication networks for advertising and sales purposes; telephone answering services; advertising services; retail store and sales promotion services connected with the sale of shipping and packaging products namely boxes, cartons, packages, mailers, envelopes, mailing tubes, packaging tapes and cushioning materials, office supplies, namely folders, storage boxes and binders, paper products, namely stationery, envelopes and self-adhesive labels, phones, greeting cards, and computer supplies namely computer paper, desktop computers, hard drives and power supplies; advertising, marketing and promotional consultancy and assistance; design of advertising materials; franchising, namely consultation and assistance in business management, organization, and promotion; business management services, namely, managing office functions in the nature of printing and document services, graphic design, web and marketing services, shipping, packaging and mailing services, and other related business services for others.

Class 38: Electronic communication services; pager rental and leasing services; electronic mail services; renting computer and internet access time to access the internet and send and receive e-mails; electronic fax filing services; facsimile transmission services; video teleconferencing services; electronic voice message services featuring recording, storage, and transmission of voice messages; providing multiple user access to the internet; computer time rental (services); information retrieval services from databases.

Class 39: Courier services; delivery; freight; shipping; shipping of goods by air and truck; packaging and storage of goods for transportation; mail forwarding services; mail box rental services; digital media storage; wrapping of packages; gift wrapping; physical storage of electronic data and media, namely, images, text, video and audio data; custom packaging of articles to the order and specification of others.

Class 40: Printing services; customised printing of company names and logos for promotional and advertising purposes on the goods of others; custom preparation of rubber stamps; key cutting; binding, collating, stapling, laminating, cutting, folding, and finishing of printed, photocopied and typewritten materials.

Class 41: Passport photography services; written text editing; writing of texts; publication services; electronic publishing services, namely, publication of text and graphic works of others on digital media including CDs; desktop publishing services; language translation services (the latter was originally wrongly classified in Class 42, but following the deficiency raised by the Office, was transferred to Class 41, as communicated to the parties).

Class 42: Graphic design services.

Class 45: Notary public services.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 16

The contested paper; pens; pencils; notebooks; computer paper; file folders; files are included in the opponent’s broad category of stationery of earlier mark 1. Therefore, they are identical.

The contested mail pouches; mailing tubes are included in the opponent’s broad category of paper and cardboard materials for packaging or wrapping of earlier mark 1. Therefore, they are identical.

The contested cardboard shipping containers overlap with the opponent’s boxes of cardboard or paper of earlier mark 1. Therefore, they are identical.

The contested sealing tape is included in the opponent’s broad category of adhesive tapes for stationery or household purposes of earlier mark 1. Therefore, they are identical.

The contested office supplies includes, as a broader category, the opponent’s typewriters and office requisites (except furniture) of earlier mark 1. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested computer ribbons are included in the broad category of, or overlap with, the opponent’s bar code ribbons of paper of earlier mark 1. Therefore, they are identical.

The contested greeting cards; shipping labels are included in the opponent’s broad categories post cards and greeting cards and dockets, address cards and labels, not of textile, respectively, of earlier mark 1. Therefore, they are identical.

The contested packaging supplies, namely, corrugated cardboard boxes, wrapping paper, paper adhesive tape, envelopes, padded envelopes, markers, felt tip markers, plastic bubble packs, stamp dispensers, and address labels are identical to the opponent’s boxes of cardboard or paper; wrapping paper; adhesive tapes for stationery or household purposes; envelopes; stationery; plastic film for wrapping; dispensers; dockets; address cards and labels, not of textile of earlier mark 1, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, or overlap with, the contested goods.

Contested services in Class 35

The contested advertising services; design of advertising materials; advertising, marketing and promotional consultancy and assistance are identical to the opponent’s advertising of earlier mark 1, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, or overlap with, the contested services.

The contested secretarial services; office administration services for others; word processing services; office function services for others; copying, duplicating, digital copying, scanning, and document services; telephone answering services; business management services, namely, managing office functions in the nature of printing and document services, graphic design, web and marketing services, shipping, packaging and mailing services, and other related business services for others are identical to the opponent’s business management and/or clerical services of earlier mark 1, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in, or overlap with, the contested services.

Business administration services for others is considered equivalent to the opponent’s business administration of earlier mark 1. Therefore, they are identical.

The contested franchising, namely consultation and assistance in business management, organization, and promotion is included in the opponent’s broad category of business administration of earlier mark 1. Therefore, they are identical.

The contested electronic commerce services, namely providing information products via telecommunication networks for advertising and sales purposes overlap with the opponent’s advertising of earlier mark 1. Therefore, they are identical.

The contested retail store and sales promotion services connected with the sale of shipping and packaging products namely boxes, cartons, packages, mailers, envelopes, mailing tubes, packaging tapes and cushioning materials, office supplies, namely folders, storage boxes and binders, paper products, namely stationery, envelopes and self-adhesive labels, phones, greeting cards, and computer supplies namely computer paper, desktop computers, hard drives and power supplies must be divided into two types of services, namely retail services and sale promotion services:

 The contested sale promotion services (in relation to different types of goods) are included in the opponent’s sales promotion for others of earlier mark 1, regardless of the specific nature of the specific goods promoted. Therefore, they are identical.

 The contested retail store services relate to the sales of goods that may be grouped as printer matter and stationery, articles for packaging and adhesives (e.g. boxes, cartons, packages, mailers, envelopes, mailing tubes, packaging tapes, stationery, envelopes, etc.) and data processing apparatus (phones, desktop computers, hard drives, etc.). Although some of the contested services (and related goods) overlap and are even identical to the opponent’s retail sale of packaging material, printed matter, office and mailing requisites and equipment; retail sale of software relating to […] accounting of earlier mark 1 (i.e. those retail services relating to identical goods), they are – at least – usually retailed together in the same outlets (e.g. shops for packaging materials, printed matter, and shops for technical apparatus such as software and hardware) and target the same public. Moreover, they coincide in nature and purpose, as they have same subject (the goods themselves). A fortiori, for the sake of completeness, the contested services are similar to specific opponent’s goods of earlier mark 1 in Classes 9 (essentially those referring to data processing equipment and software) and 16 (printed matter, packaging materials, etc.). Although the nature, purpose and method of use of these goods and services are not the same, they display similarities, since they are complementary and the services are generally offered in the same places as where the goods are offered for sale. Furthermore, they target the same public. Consequently, all the contested retail store services are considered at least similar (when not identical).

Contested services in Class 38

The contested electronic communication services; electronic mail services; facsimile transmission services; pager rental and leasing services; renting computer and internet access time to access the internet and send and receive e-mails; electronic fax filing services; video teleconferencing services; electronic voice message services featuring recording, storage, and transmission of voice messages; providing multiple user access to the internet; computer time rental (services); information retrieval services from databases are included in the opponent’s broad category of telecommunications of earlier mark 2. Therefore, they are identical.

Contested services in Class 39

The contested shipping; courier services; delivery; freight; shipping of goods by air and truck; mail forwarding services are included in the opponent’s broad category of transport of earlier mark 1. Therefore, they are identical.

The contested mail box rental services is considered equivalent to the opponent’s rental of post boxes of earlier mark 1. Therefore, they are identical.

The contested gift wrapping; packaging and storage of goods for transportation; digital media storage; wrapping of packages; physical storage of electronic data and media, namely, images, text, video and audio data; custom packaging of articles to the order and specification of others are included in the opponent’s broad category of packaging and storage of goods of earlier mark 1. Therefore, they are identical.

Contested services in Class 40

Printing services is identically contained in the contested goods and the list of services of earlier mark 1 (worded as printing).

The contested customised printing of company names and logos for promotional and advertising purposes on the goods of others are included in the opponent’s broad category of printing of marketing material of earlier mark 1. Therefore, they are identical.

The contested custom preparation rubber stamps; key cutting are related to the opponent’s customized production of materials for others of earlier mark 1. These services can coincide at least in usual origin, distribution channel and relevant public. Therefore, they are similar.

The contested services binding, collating, stapling, laminating, cutting, folding, and finishing of printed, photocopied and typewritten materials are at least similar to the opponent’s printing of earlier mark 1. These services can coincide at least in usual origin, distribution channel, relevant public and general purpose. Moreover, some of them may be complementary.

Contested services in Class 41

The contested written text editing; writing of texts; publication services; electronic publishing services, namely, publication of text and graphic works of others on digital media including CDs; desktop publishing services are identical to the opponent’s publishing of earlier mark 1, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in, or overlap with, the contested services.

The contested passport photography services are related to the opponent’s printing in Class 40 of earlier mark 1, which includes photographic printing. These services can coincide in usual origin, distribution channel, relevant public and general purpose (creating photographs). Therefore, they are similar.

The contested language translation services are, however, dissimilar to all of the goods and services covered by the earlier marks 1, 2, 3 and 4. Translation is the communication of the meaning of a source-language text by means of an equivalent target-language text and interpretation covers the facilitation of dialogue between parties using different languages. When compared to the opponent’s goods and services, the contested translation and interpretation do not have the same purpose, relevant public, distribution channels or usual origin.

Firstly, while translation and interpretation services may be necessary for the provision of certain services in, for example, the advertising, entertainment, publishing and tourism industries they are nevertheless specific services that are usually provided either by professional individuals or undertakings specialised in the provision of these services. In addition, translation and interpretation services are normally covered by separate contracts.

Secondly, the services are not complementary to any of the opponent’s goods or services. According to case-law, goods and/or services are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (11/05/2011, T‑74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T‑558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T‑504/11, Dignitude, EU:T:2013:57, § 44). However, in the present case, the nature of those goods and services is very different and the skills that an undertaking requires in order to provide one or other of those categories of goods and services are very different (06/02/2020, T‑135/19, LaTV3D / TV3, EU:T:2020:36, § 23-26).

The opponent has not provided any evidence to allow a different conclusion.

Contested services in Class 42

The contested graphic design services are related to the opponent’s design and development of e-commerce websites and consultation relating to website design. These services can coincide in usual origin, distribution channels, relevant public and general purpose (providing solutions on the creation/design of websites, etc.). Moreover, those services related to consultation/advice are complementary. Therefore, these services are at least similar.

Contested services in Class 45

The contested notary public services overlap with the opponent’s broad category of legal services of earlier mark 1. Therefore, they are identical.

Conclusion in relation to the comparison of goods and services

All the contested goods and services, except language translation services in Class 41, which are dissimilar to the opponent’s goods and services of all the earlier marks, have been found identical or similar to varying degrees to opponent’s goods and services of earlier mark 1 (i.e. those in Classes 16, 35, 39, 40, 41, 42 and 45) and earlier mark 2 (i.e. those in Class 38). Therefore, these are the earlier marks that will be included in the comparison of the signs.

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.

The goods and services found to be identical or similar to varying degrees target partly the public at large (e.g. pencils and notebooks in Class 16), partly business customers with specific professional knowledge or expertise (e.g. design and development of e-commerce websites in Class 42, some specialised apparatus in Class 9) and partly both (e.g. electronic communication services in Class 38).

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased. While some of the goods/services may be of a rather common nature, others are considered highly specialised and with a very specific application (graphic design services in Class 42) or involve business success of companies (consultancy and advisory in Class 35).

c) The signs

POSTI

Earlier mark 1

Earlier mark 2

Earlier trade marks

Contested sign

The relevant territory is Finland.

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 public in the relevant territory will perceive the earlier marks’ verbal element ‘POSTI’ as referring to, inter alia, the system of mail delivery: a particular kind of service, most commonly involving the receipt, transportation and delivery of letters and parcels (information extracted from Dictionary of Contemporary Finnish (Kielitoimiston sanakirja) on 15/07/2021 at https://www.kielitoimistonsanakirja.fi/#/posti?searchMode=all). Moreover, it may be associated with the main Finnish postal service delivering mail and parcels in Finland, at least in connection with goods and services that have been or have become closely connected with (or available from) the national postal network and post offices. This conclusion is supported by, inter alia, the several surveys submitted by the opponent, listed further below. Bearing in mind that some of the relevant services relate to the collecting, forwarding and delivery of direct and indirect mail, postal services, the forwarding and delivery of consignments, or goods such as packaging supplies, which may also relate to this sector, the element ‘POSTI’ is, per se, non-distinctive or weak for some of the goods and services covered by the earlier mark (depending on how close this meaning is for them), since it refers to their nature, purpose, or the means of providing the services (13/05/2015, T‑102/14, TPG POST / DP et al., EU:T:2015:279, § 50, 68-69). However, it is distinctive to a normal degree in relation to the rest of the opponent’s goods and services for which it has no direct meaning.

Although signs must not be artificially dissected, when a sign contains sequences of letters that constitute words, prefixes or suffixes that suggest a concrete meaning, or that resemble words the consumers already know, it is likely that the public will split the mark into the words or parts they recognise (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). The contested sign will be dissected into the components ‘POST’ and ‘NET’, not only due to the meaning conveyed by these words (as seen below), but also due to the larger size of their initial letters ‘P’ and ‘N’.

The component ‘POST’ will be immediately associated without further reflection with the same meaning described above, that is, with the postal system, mainly because it is very close to the equivalent word in Finnish, posti, and the word post exists in Swedish, which is an official language and spoken by a part of the Finnish population. Consequently, the findings made above in relation to the distinctive character of this element also apply by analogy.

The component ‘NET’ of the contested sign is a common abbreviation for ‘the internet’ or ‘network’ and has acquired a highly evocative connotation throughout the European Union (including for the general public in Finland, who have at least a basic understanding of English, 26/11/2008, T‑435/07, New Look, EU:T:2008:534, § 23), as referring to the ‘computer network which allows computer users to connect with computers all over the world’ or to a ‘system of interconnected computer systems, terminals, and other equipment allowing information to be exchanged’ since it is a basic English word (26/02/2016, R 982/2015‑2, NETWATCH, § 24; 26/01/2016, R 803/2015‑4, CLARANET / CLARO, § 20; 14/11/2017, T‑129/16, claranet (fig.) / CLARO et al., EU:T:2017:800, § 39; 04/09/2015, R 3121/2014‑2, SERVERNET, § 16; 06/03/2014, R 728/2013‑1, greenNet, § 23; 27/08/2013, R 345/2013‑4, MEDNET, § 10). Additionally, the suffix ‘net’ is widely used as an internet domain name and the word is very close to the Finnish equivalent Netti (https://www.kielitoimistonsanakirja.fi/#/nettihttps://www.kielitoimistonsanakirja.fi/).

Considering that the contested services that were found similar to varying degrees to the opponent’s goods and services could all be provided through the ‘NET’ (indeed, many of them are essentially electronic services, e.g. electronic mail services in Class 38), this element has a very limited distinctiveness, as it may refer to the nature or the means of providing the services. However, it is distinctive to a normal degree in relation to the contested goods in Class 16 such as pens, notebooks for which it has no direct meaning.

The stylisation of both the contested sign and earlier mark 2 is rather standard and will be merely perceived as a graphical means of bringing the verbal elements, to which consumers will attribute more importance, to the attention of the public. Its distinctiveness and impact on the comparison of the signs will be limited in both signs.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the sequence of letters ‘POST’, which are the first four letters of the earlier marks and of the first component of the contested sign, and therefore have a major impact. The signs differ in the fifth letter of the earlier marks, ‘I’, and in the additional component of the contested sign, ‘NET’. Additionally, the signs differ in the stylisation of the contested sign (in red) and that of earlier mark 2 (in orange), which, however, are rather standard and have a limited impact.

The coinciding elements are of limited distinctiveness for some of the relevant goods and services, as explained above. However, the additional component ‘NET’ of the contested sign will also have a very limited impact for part of the relevant goods and services, given its descriptive character and second position in the sign. Consequently, for those services related to postal services, the components ‘POST’ and ‘NET’ are of an equally limited distinctiveness and, therefore, the limited distinctiveness of ‘POST’ is not an important determining factor in the overall impression, given that ‘NET’ is also descriptive.

Taking into account the above, the contested sign and earlier mark 1 are visually similar to an average degree, while, due to its slight stylisation, earlier mark 2 is similar to a below-average degree.

Aurally, the signs coincide in the sounds of the letters ‘POST’ and differ in the sound of the fifth letter of the earlier marks, ‘I’, and the additional component of the contested sign ‘NET’.

Bearing in mind the foregoing, the signs are similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs as well as the varying degrees of distinctive character of their components. Despite the differences in the signs (the additional element ‘NET’ of the contested sign), the signs will be associated with a similar concept through the coinciding elements ‘POST/I’. Although the distinctiveness of this element is very limited, especially in relation to those services related to postal services, the additional element ‘NET’, which is also of limited distinctiveness, cannot significantly influence and counteract this similarity. Consequently, the signs are conceptually at least similar to a low degree.

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

d) Distinctiveness of the earlier 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.

According to the opponent, earlier marks 1 and 2 have a reputation and enjoy a high degree of distinctiveness as result of its long standing and intensive use in Finland in connection with all the goods and services for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The evidence submitted by the opponent on 20/02/2020 may be categorised as follows:

 Surveys on the recognition of the marks – market surveys conducted by different independent companies (i.e. ‘IRO Research’, ‘Taloustutkimus’ and ‘CX Development’) in Finland in 2015, 2016 and 2018. The information is in Finnish, although partial translations of the most important information are provided. They mainly show the brand awareness of ‘POSTI’ in the field of transportation, logistics and postal delivery using percentages and statgraphics’ analysis, which show this awareness in relation to competitors. Some details, such as the circumstances under which they were carried out, the formulated questions (an example with the distribution of answers is also submitted) as well as details about the interviewees, such as number and profile (e.g. sex and age), are given. They show, inter alia, significant spontaneous and aided awareness of the earlier marks in relation to the sector of logistics and postal delivery. For instance:

o ‘Remembrance of companies offering packages services’ from the survey dated 15/06/2015 (thousands of Finnish respondents/participants) shows 60 % top of mind awareness of the earlier marks, which indicates that the opponent is by far the best-known company in this field before other companies such as Matkahuolto (4 %), DHL (6 %), UPS (6 %) and FedEx (1 %) (exhibit 20). The question was ‘how many companies offering package services can you remember by name? In other words companies that deliver e.g. packages ordered from webstores to consumers. Name as many as you remember’.

o ‘Spontaneous recognition of companies offering package services’ from the survey dated 27/12/2015 (500 participants) shows a 49 % top of mind awareness of the earlier marks, while the following companies have 7 % (DHL), 6 % (Matkahuolto), 2 % (UPS) and 1 % (FedEx) (exhibit 21). The question was ‘which companies offering package services do you remember by name?’.

o ‘Recognition of logos relating to the field of transportation, logistics and postal delivery’ from the survey dated 31/01/2018 (1 006 respondents) shows that 95 % of the interviewees recognised the logo . Other logos of competitors recognised were (95 %), (84 %) and (60 %) (exhibit 38).

o ‘Spontaneous recognition of letter and package service brands operating in Finland’ shows that 75 % of the respondents would use ‘POSTI’ services for postal services, while the percentage for competitors is below 10 % (exhibit 41). The question was ‘if you had to send a letter or package, which brand would you use?’.

 Financial reports – there are several internal financial reports which show, inter alia, very high turnovers, for instance the revenue in 2014 was EUR 1 859 million (and also show similar figures for the previous years) (exhibit 3); this document also states that ‘POSTI has the broadest service network in Finland, which includes all the postal, logistics and webstore services that the clients need, whether for messages or goods, and that many of the services are also available electronically on the web. Exhibit 37 lists the ‘POSTI’ network of service points at the beginning of 2016 (1 405 service points and 480 parcel kiosks), which is a very high number taking into account the relevant sector and the size of the country.

 Advertising materials and documents giving information about ‘POSTI’ services and the history of the opponent’s company history. The opponent submitted a significant number of documents that offer indications, inter alia, about the background and evolution of the company, the long-standing use and promotional activities, how the mark is used (in advertising, website, establishments, employees, delivery trucks, mailboxes, etc.) and in relation to which services. Extracts show the presence of ‘POSTI’ on the main social media platforms (e.g. LinkedIn, Facebook, Instagram and YouTube).

 Extract from ‘Patenti-Ja Rekisterihallitus’, showing the acceptance of the earlier marks in the list of trade marks with a reputation, which is administered by the Finnish Patent and Registration Office (exhibit 47).

To establish whether or not the earlier marks have a reputation or enhanced distinctiveness, the important thing is whether or not the documents listed above demonstrate recognition on the part of the relevant public, always bearing in mind that such an assessment must take into account the evidence as a whole. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including whether or not it contains an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public that, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 22).

It is clear from the materials and documents listed above that the earlier marks have been subject to long-standing and intensive use and are generally recognised in the Finnish market as indicating a brand that enjoys a consolidated position in the field of transportation, logistics and postal delivery. This has been mainly attested by three different independent sources, such as the market surveys carried out by ‘IRO Research’, ‘Taloustutkimus’ and ‘CX Development’ in 2015, 2016 and 2018 that show there is a high knowledge of the brand. It is the best-known brand within the relevant sector, as indicated above, with a significant ‘top of mind’ awareness (49-60 %) and an even higher ‘promoted’ recognition (95 %) for the Finnish consumers, which is quite significant for the relevant field where a number of companies compete.

Furthermore, documents indicate that the opponent made efforts to promote its trade marks using various marketing channels. The opponent’s products have been successfully marketed and have generated steady turnovers over the years. Moreover, the evidence also shows a continued use and great longevity of the marks, which are strong (indirect) indicators of reputation. The longer the marks have been used in the market, the larger will be the number of consumers that are likely to have encountered them.

Finally, although the substantive and procedural conditions applicable in national proceedings as to how the requirement of reputation is defined or interpreted, the fact that the trade marks have been included as trade marks with reputation by the Finnish Patent and Registration Office cannot be ignored and has some evidentiary value, when assessed in conjunction with the rest of the evidence.

However, the evidence does not succeed in establishing that the trade marks have a reputation for the all the goods and services for which reputation has also been claimed, but only for those services in Class 39 (within the field of transportation, logistics and postal delivery) in respect of which identity has been found.

Consequently, considering what has been stated above in section c) of this decision, the distinctiveness of earlier mark 1 in relation to the services (in Class 39), for which it directly describes their nature, has been enhanced (due to the long-standing use of the mark) and is at least lower than average, while for the remaining goods and services, the distinctiveness of earlier marks 1 and 2 will rest on their distinctiveness per se. Following the references made above, the intrinsic distinctiveness of the earlier marks for the remaining goods and services may vary from low to average, depending on whether the term ‘POSTI’ alludes to (but not directly describe) one of the characteristics of the goods/services or has no direct meaning for them.

e) Global assessment, other arguments and conclusion

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

Account is taken of the fact that average consumers 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

The goods and services are partly identical, partly similar (to varying degrees) and partly dissimilar, and they target the public at large and the professional public. The degree of attention varies from average to high.

The signs have been found visually similar to a below-average degree (earlier mark 2, which is figurative) and to an average degree (earlier mark 1), aurally similar to an average degree and conceptually similar to at least a low degree. The differences between the earlier marks and the contested sign mainly arise from the additional verbal element ‘NET’ (which will be perceived and dissected given its clear and evocative meaning and that its first letter is larger) and the standard stylisation of the contested sign. However, even considering that these elements can create some visual and aural differences between the marks, they are not able to counter the similarities arising from the fact that the contested sign incorporates the sole verbal element of the earlier mark almost in its entirety. This is because ‘POSTI’ and ‘POST’ will be immediately perceived in the same way, as explained above, since the presence of the letter ‘I’ at the end of the earlier marks or the lack of the letter ‘I’ in the middle part of the contested sign may go unnoticed. Nor can they prevent a likelihood of association between the contested sign and the earlier marks.

Admittedly, the term ‘POSTI’ has a very limited inherent distinctiveness, particularly in relation to postal-related services, as indicated above. However, a low level of distinctiveness of an element does not necessarily mean, when its size and position in the sign are taken into account, that that element is negligible in the overall impression produced by that mark (08/02/2011, T‑194/09, Líneas aéreas del Mediterráneo, EU:T:2011:34, § 30; 03/09/2010, T472/08, 61 a nossa alegria, EU:T:2010:347, § 49; 06/06/2013, T‑411/12, Pharmastreet, EU:T:2013:304, § 29). Moreover, according to common practice, when marks have in common an element with no (or low) distinctiveness, the assessment will focus on the impact of the non-coinciding components on the overall impression of the marks (i.e. ‘NET’). This assessment will take into account the similarities/differences and distinctiveness of the remaining elements. As mentioned, the additional element ‘NET’ of the contested sign also has a very limited distinctiveness (in relation to the relevant services) and occupies a secondary position. Therefore, it is insufficient to dispel a likelihood of confusion in the mind of the relevant public, especially considering the enhanced distinctive character that ‘POSTI’, the coinciding element, has in relation to the services in Class 39.

The applicant refers to the judgment 13/05/2015, T‑102/14, TPG POST / DP et al., EU:T:2015:279 to support its arguments. However, the circumstances were not the same as in the present case. In those proceedings, the element ‘TPG’, which is in the initial part of the sign, was considered meaningless and distinctive and likely to be perceived by the public as a reference to the initials of a specific company (such as in the case of companies such as ‘TNT’, ‘DHL’ and ‘UPS’), as the main indicator of origin. In the present case, the additional word, ‘NET’, has little trade mark significance in relation to the services for which ‘POST’ has a limited inherent distinctiveness, as it may refer to the nature or the means of providing the services, in particular, via the internet. Moreover, it is the second word and not the first one as in the cited case. Furthermore, the opponent has proved an enhanced distinctive character for the coinciding element, since the earlier marks’ ‘POSTI’ is widely recognised by the Finnish public as an indicator of origin within the field of transportation, logistics and postal delivery. Consequently, it is highly conceivable that the relevant consumers will perceive the contested sign as a sub-brand, a variation of the earlier marks, configured in a different way according to the type of services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49), namely as referring to the postal services provided through the internet.

Consequently, taking into account all the facts set out above, the Opposition Division is of the opinion that the differences between the signs are incapable of counteracting the similar overall impressions created by them so as to exclude a likelihood of confusion between the marks in relation to the relevant (identical and similar) goods and services, even where the degree of attention of consumers is high.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Finnish public and therefore the opposition is partly well founded on the basis of the opponent’s Finnish trade mark registrations No 269 485 and No 262 495.

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 those of the earlier trade marks.

The remaining contested services, namely language translation services are dissimilar to all the goods and services of all the earlier trade marks. As the identity or 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 services cannot be successful.

For the sake of completeness, given that the opposition has not been upheld on the basis of the Finnish trade mark registration No 257 862 ‘NETPOSTI’ (earlier mark 3) for which proof of use was validly asked and duly filed, it is unnecessary to examine the evidence of use submitted by the opponent.

REPUTATION – ARTICLE 8(5) EUTMR

The opponent claimed reputation of earlier trade marks 1 and2 in Finland for all goods and services registered.

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

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

 The signs must be either identical or similar.

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

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

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade marks

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade marks has already been examined 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.

On the basis of the above, the Opposition Division concludes that the earlier trade marks have a reputation in Finland for part of the goods and services for which the opponent has claimed reputation, namely for transport; packaging and storage of goods; travel arrangement; freight transportation and forwarding services; storage (physical -) of electronically-stored data or documents; filing documents [storage]; storage of recording disks and equipment; storage of mail consignments; post office services; delivery of mail; receiving, assorting, packing, covering and sending mail; receiving, assorting, packaging and sending letters and other documents; tracking consignments and deliveries; rental of transportation equipment; rental of post boxes and transportation material; sorting and packaging of marketing material; consultation relating to afore mentioned services in Class 39.

b) The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

c) The ‘link’ between the signs

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

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

 the degree of similarity between the signs;

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

 the strength of the earlier mark’s reputation;

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

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

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

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

According to the Court of Justice of the European Union,

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

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

The Court of Justice has also noted,

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

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 51-52.)

As mentioned above the signs are visually similar to a below-average degree (earlier mark 2, which is figurative) and to an average degree (earlier mark 1), aurally similar to an average degree and conceptually similar to at least a low degree.

Earlier marks 1 and 2 (Finnish trade mark registrations No 269 485 and No 262 495) have reputation in the field of transportation, logistics and postal delivery in Class 39, whereas the contested services for which the opposition is unsuccessful under Article 8(1)(b) EUTMR are language translation services in Class 41. These services are dissimilar, as explained in detail above. They are not only very different in nature and purpose, but also belong to very different fields and are provided by undertakings and/or individuals specialised in each sector. Even though the relevant section of the public for the relevant services may be the same or overlaps to some extent, those services are so dissimilar that the contested sign is unlikely to bring the earlier marks to the mind of the relevant public.

The differences in usage between the field of linguistic disciplines and that of transportation, logistics and postal delivery make it very unlikely that the public will make a link between the signs in dispute, which is essential for the application of Article 8(5) EUTMR and for unfair advantage to be taken of the distinctive character or repute of the earlier marks. Other important factors are the degree of similarity between the signs, which are overall similar (but not identical or highly similar, which would make such a link more possible) and the earlier marks’ degree of distinctiveness. This is at least lower than average as a result of its long-standing use, but has an inherent descriptiveness.

Therefore, it is highly unlikely that the relevant public will associate these services under the contested sign, which are usually provided by outsourced companies specialised in translation/interpretation services, with the reputed earlier marks.

It is unlikely that the relevant public will make a mental connection between the signs in relation to the abovementioned services even though the public may overlap to a certain extent. Consequently, bearing in mind the fundamental differences, a link is unlikely to be established, even considering that the earlier marks enjoy a significant degree of recognition for the aforementioned services among the public in Finland.

Although, Article 8(5) EUTMR is applicable to situations where the goods and services are dissimilar, this provision does not give blanket protection but rather depends on the interplay of the relevant factors. The greater the differences in the goods and/or services, as in this case, the more similar the marks and the stronger the reputation/degree of distinctiveness will need to be in order for the relevant public to associate the marks. As argued above, the sectors to which the services pertain are very different, and there is no market reality that would indicate otherwise. The opponent has not submitted any evidence to allow a different conclusion.

Consequently, for the reasons mentioned above, the Opposition Division is of the opinion that, in relation to language translation services, the relevant public will not establish a link with the earlier reputed marks and, for this reason, there can be no injury of any type, as covered under Article 8(5) EUTMR. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be also rejected in relation to this ground as regards these services.

COSTS

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

Edith Elisabeth VAN DEN EEDE

Félix ORTUÑO LÓPEZ

Erkki MÜNTER

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.

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THE FOURTH CIRCUIT DISMISSES NIKE’S APPEAL OVER INJUNCTION
May 27, 2021
Fleet Feet Inc, through franchises, company-owned retail stores, and online stores, sells running and fitness merchandise, and has 182 stores, including franchises, nationwide in the US.
UNO & UNA | DECISION 2661950
May 22, 2021
Marks And Spencer Plc, Waterside House, 35 North Wharf Road, London W2 1NW, United Kingdom, (opponent), represented by Boult Wade Tennant, Verulam Gardens, 70 Grays Inn Road, London WC1X 8BT, United Kingdom (professional representative)