OPPOSITION Nо B 3 084 674

 

Laverana GmbH & Co. KG, Am Weingarten 4, 30974 Wennigsen, Germany (opponent), represented by Grünecker Patent- und Rechtsanwälte PartG mbB, Leopoldstr. 4, 80802 München, Germany (professional representative) 

 

a g a i n s t

 

Lavinde Copenhagen Aps, Valby Langgade 39 A, 1. Tv., 2500 Valby, Denmark (applicant), represented by Plesner, Amerika Plads 37, 2100 Copenhagen, Denmark (professional representative).

On 18/12/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 084 674 is rejected in its entirety.

 

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

 

REASONS

 

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 041 418 ‘LAVINDE COPENHAGEN’ (word mark), namely against all the goods and services in Classes 3, 18, 21, 25, 35. The opposition is based on European trade mark registration N° 11 493 426 ‘Lavera’ (word mark) .The opponent invoked  Article 8(1)(b) and Article 8(5) EUTMR.

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

 

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

 

 

a) The goods and services

 

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

Class 3: Body and skin care and beauty preparations (not for medical purposes); milks, tonics, lotions, creams, emulsions, gels for the face and body; non-medicated cleansing preparations for the face and body; skin astringents not for medical purposes; body mist; non-medicated foot baths, depilatory creams; pumice stones for personal use; soaps; bubble bath; shower creams and gels; skin exfoliating products; make-up removing preparations for the face; talcum powder; shampoos; hair lotions, oils, conditioners and repair preparations; hair dyes; hair spray, gel and mousse; hair brighteners; hair mascaras; shaving creams and gels; after-shave gels and lotions; perfumery; deodorants for personal use; essential oils; bath beads; bath oils and salts; cosmetics; masks; foundation cream; blush; bronzing powder; make up powder; facial shimmer preparations; mascara; eyeliners; cosmetic eye and lip pencils; eye shadows; lip balms; lip gloss; lipsticks; makeup removing preparations; nail polish; nail forms; false nails; nail polish remover; cuticle creams; preparations for strengthening nails; non-medicated concealer sticks; body glitter; sun-tanning lotions and creams for the face and body; fake tan lotions and creams for the face and body; sunscreen creams; after sun lotions and creams for the face and body; Perfumes, eaux de toilette; bath and shower gels and salts not for medical purposes; toilet soaps; cosmetics, in particular creams, milks, lotions, gels and powders for the face, body and hands; sun-tanning milks, gels and oils and after-sun preparations (cosmetics); make-up preparations; shampoos; gels, mousses, balms and preparations in aerosol form for hairdressing and haircare; hair lacquers; hair-colouring and hair-decolorizing preparations; preparations for waving and setting hair; cosmetics, decorative cosmetics; face creams and lotions; skin-cleansing lotions and creams, hand and body lotions and creams; tinted moisturising creams, make-up, foundation, face powder and rouge; blemish stick, lip pencils, eyeliner pens and mascara, eyeshadow; sun care preparations; foot-care preparations; foot creams and lotions; exfoliants; abrasive implements in the form of pumice stones; non-medicated powders and lotions for foot spas; body care products, shower gels, hair care products; shampoos and hair lotions, conditioning rinses (conditioners), combined shampoo and conditioner, hair sprays, styling mousse and gels; hair dyes; baby and infant care products; bath oils, shampoos, skin oils and creams; anti-wrinkle creams; massage oils; grooming products for men; shaving cream, after-shave balms products for oral hygiene (not for medical purposes); preparations for the mouth and for cleaning the mouth, breath-freshening and mouth-freshening preparations, mouth sprays, mouth rinses, dentifrices; toothpaste; antiperspirants.

Class 5: Pharmaceutical products and health-care products; medicated lubricants; dietetic substances and sanitary preparations, dietetic substances adapted for medical use; vitamin preparations; disinfectants; royal jelly (for medical purposes); herbal tea for medical or therapeutic purposes; corn remedies; headache pencils; lactose; milking grease; except foodstuffs, dietetic substances and beverages especially for babies, infants and children, included in this class; nutritional supplements that may contain proteins, glucides, lipids, peptides and/or fibres, or micronutrients such as vitamins and/or minerals and/or amino acids and/or fatty acids and/or plants, and/or vegetable extracts and/or purified molecules extracted from vegetables, for beauty and skin, body, face, hair or nail care, in the form of capsules, tablets, ampules, yeast, powders, bars, creams or drinks, for medical and/or cosmetics and/or food purposes; nutritional additives made from meat, fish, poultry and game, meat extracts, fruit and canned vegetables, dried and cooked, jellies, jams, compotes, eggs, milk and milk products, edible oils and fats, for beauty and skin, body, face, hair or nail care in the form of capsules, tablets, vials, yeast, powders, bars, creams or beverages, for medical and/or cosmetics and/or food purposes; nutritional supplements that may contain coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionary, ices, honey, treacle, yeast, baking powder, salt, mustard, vinegar, sauces (condiments), spices, ice, for beauty and skin, body, face, hair or nail care, in the form of capsules, tablets, ampules, yeast, powders, bars, creams or drinks, for medical and/or cosmetics and/or food purposes; nutritional additives made from agricultural, horticultural, forestry and seed products (not included in other classes), fresh fruit and vegetables, seeds, plants and natural flowers, for beauty and skin, body, face, hair or nail care in the form of capsules, tablets, vials, yeast, powders, bars, creams or beverages, for medical and/or cosmetics and/or food purposes; nutritional additives for beauty and skin, body, face, hair or nail care in the form of vials for drinking or beverages, for medical and/or cosmetics and/or food purposes; cosmetics in all galenical forms, not adapted for medical use.

Class 32: Anti-aging beverages, not for pharmaceutical purposes.

 

Class 44: Medical services; medical clinics; health and beauty care services, hygienic services; aromatherapy services; massage; manicuring; beauty salons, hairdressing salons; hygienic and beauty care; health consultancy; manicuring; operating of wellness equipment, namely operating beauty salons and medical healing and thermal spas, consultancy in the field of hygienic and beauty care, in particular in the field of decorative cosmetics and anti-ageing; nutrition consultation.

The contested goods and services are the following:

 

Class 3: Colour cosmetics; facial preparations; powder compact refills [cosmetics]; moisturising preparations; cosmetics; lip cosmetics; cosmetic nourishing creams; paper hand towels impregnated with cosmetics; facial washes [cosmetic]; sun protecting creams [cosmetics].

Class 18: Cosmetic purses; vanity cases sold empty; cosmetic purses; cosmetic bags sold empty.

Class 21: Cosmetic utensils; containers for cosmetics; applicators for cosmetics; hand tools for the application of cosmetics; holders for cosmetics; cosmetic and toilet utensils and bathroom articles; applicators for cosmetics; cosmetic brushes.

Class 25: Clothing; footwear; headgear.

Class 35: Wholesaling and retailing, including via the internet, of colour cosmetics, cosmetic facial preparations, powder compact refills, cosmetic moisturisers, cosmetics, lip cosmetics, cosmetic nourishing creams, paper hand towels impregnated with cosmetics, facial cleansers (cosmetics) and sun protection creams (cosmetics); wholesaling and retailing, including via the internet, of cosmetic bags, vanity cases, not fitted, cosmetic purses and cosmetic bags, not fitted; wholesaling and retailing, including via the internet, of cosmetic utensils, containers for cosmetics, applicators for cosmetics, hand tools for the application of cosmetics, holders for cosmetics, cosmetic and toilet utensils and bathroom articles, cosmetic applicators, cosmetic brushes; wholesaling and retailing, including via the internet, in the fields of clothing, footwear, headgear.

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

b) Relevant public — degree of attention

 

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services assumed to be identical are directed at the public at large and at professionals. Therefore, the degree of attention is considered to be average and high, considering that it is
apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T-288/08, Zydus, EU:T:2012:124, § 36).

 

In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

 

Given that the general public is more prone to confusion, the examination will proceed on this basis as this is the best scenario for the opponent. .

c) The signs

 

Lavera	LAVINDE COPENHAGEN
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).

Both signs are word marks protected in all typefaces.

The earlier mark consists of the word ‘Lavera’. For the majority of the relevant public ‘Lavera’ has no meaning. However, it cannot be excluded that part of the public, such as the Spanish-speaking part of the public might perceive the earlier mark as ‘La vera’, which is a noun that refers to an edge or a bank (of a river). Furthermore, the French-speaking part of the public may perceive the earlier mark as the third singular person of the verb ‘to wash’ (‘laver’) in future tense. In any case, even for these parts of the public that may perceive ‘lavera’ with various meanings, none of them have any direct link to the relevant goods or their characteristics. Therefore, the earlier mark is distinctive for the entire relevant public.

The contested sign consists of the word ‘LAVINDE COPENHAGEN’. The second element of the contested sign will be perceived throughout the whole EU as the capital of Denmark either because the English name of the city is known as such or the English version is similar to the one in the respective language. As such it is non-distinctive for the goods and services at hand as it either may refer to the place of production or the place of the offer of the goods and services. As in the earlier mark it cannot be excluded that the above mentioned part of the public also recognizes here the French article ‘La’. Being an article, it is not able to designate the commercial origin and is considered non- distinctive.

 

Visually and aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs/ the pronunciation of the signs coincide in the letters ‘Lav’ at the beginning of the signs and they differ in the remaining string of letters ‘era’ and ‘inde’ ‘Copenhagen’ (non-distinctive) that do not have counterparts in the other signs.

Even though it’s true that the coinciding elements are at the beginning of the signs and that the element Copenhagen will, due to its descriptive meaning, not be paid as much attention, the earlier mark and the first element of the contested mark only coincide in 1 syllable ( LA-VE-RA vs. LA-VIN-DE COPENHAGEN). Except in the first syllable, the vowels in the other syllables are clearly different ‘E / I’ and ‘A /E’.

Therefore, the signs, are visually and aurally similar to a below average degree.

 

Conceptually, reference is made to the previous assertions concerning the meaning of the signs and their element. For the public that understands the earlier sign, the signs are not conceptually similar. While for the public for whom neither of the signs has a meaning, the conceptual aspect does not influence the current assessment. The same applies for the part of the public for whom only the beginning has a meaning, as the coincidence in a non-distinctive element does not influence the current assessment either.

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

 

d) Distinctiveness of the earlier mark

 

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

 

According to the opponent, the earlier mark enjoys a high degree of recognition among the relevant public in connection with the above listed goods and services in particular with the ones in Class 3. 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).

 

As regards to the evidence submitted as evidence of proof of use on 13/03/2019, the following is noted. Even though, according to Article 7(2) EUTMDR, the opponent has to provide evidence of substantiation within a time limit set by the Office, this cannot be interpreted as automatically preventing additional evidence from being taken into account.

In this case, the evidence was filed 23/01/2020 within the substantiation period and the further evidence (attachments 11-18) was submitted on 05/08/2020.

It is noted that where after the expiry of the period referred to in Article 7(1) EUTMDR, the opponent submits facts and evidence that supplement relevant facts or evidence submitted within that period and that relate to the same requirement laid down in Article 7(2) EUTMDR, the Office has to exercise the discretion conferred on it by Article 95(2) EUTMR in deciding whether to accept these supplementing facts or evidence, subject to the conditions of Article 8(5) EUTMDR. The Office must exercise its discretionary power if the late facts or evidence merely supplement, strengthen and clarify the prior relevant evidence submitted within the time limit that relate to the same legal requirement laid down in Article 7(2) EUTMDR, namely, when both sets of facts or evidence refer to the same earlier mark, to the same ground and, within the same ground, to the same requirement.

In exercising its discretion, the Office must take into account, in particular, the stage of proceedings and whether the facts or evidence are, prima facie, likely to be relevant for the outcome of the case and whether there are valid reasons for the late submission of the facts or evidence. The acceptance of additional belated evidence is unlikely where the opponent has abused the time limits set by knowingly employing delaying tactics or by demonstrating manifest negligence.

In this regard, the Opposition Division considers it appropriate to proceed on the basis of the premise that the belated evidence is to be taken into account, as this is the best case scenario for the opponent and it will not be to the applicant’s detriment, as can be seen below. Moreover it should be mentioned that the applicant was commenting on the belated evidence.

As far as the evaluation of the evidence is concerned, it must be borne in mind that the relevant date for proving enhanced distinctiveness is set at the filing date of the contested trade mark. The closer to the relevant date the evidence is, the easier it will be to conclude that the earlier mark had acquired enhanced distinctiveness at that time.

The filing date of the contested mark is 26/03/2019. Therefore, the opponent was required to prove that the earlier mark enjoyed enhanced distinctiveness prior to that date.

The evidence consists of the following documents:

 

Attachment 1:

Copy of an affidavit signed by the opponent’s Managing Director 24/04/2019. In the affidavit it is informed that the opponent focuses on the manufacture and sale of natural cosmetics in the cosmetics market, in particular in Germany and in the EU over drugstores and online retail. The affidavit refers to market strategies using testimonials, tv spots and events.

Attachment 2: Copy of a printout extracted on 28/11/2016 from the opponent’s website http://www.lavera.de/en/about-lavera/the-lavera-brand/lavera-international containing a list of the opponent’s international export partners, inter alia containing partners in Denmark, Poland, Lithuania, Hungary, the Czech Republic, Greece, Finland, Italy and Spain.

.

Attachment 3 Excerpts dated 10/12/2018 from partner websites/online shops, such as www.naturisimo.com, www.pravera.co.uk, www.amazon.fr, www.amaxon.it, www.ecco-verde.es and www.helsam.dk demonstrating an extensive offer of ‘Lavera’-labelled cosmetic products within the EU(beyond the relevant period).

Attachment 4: Screenshots of the websites printed off 23/04/2019 showing website of the online shops of different drugstores, perfumeries and supermarkets referring to their product range of Lavera products creams and lotions, deodorants, lip balms, lip liners, eye liners, highlighters, face masks, shower gels and shampoos. The sign is represented as follows:

Attachment 5 and 6: Various excerpts, including printouts from the opponent’s website ‘lavera.de’ listing many awards won by the opponent for its ‘Lavera’ products between 2015 and 2018 (such as the ‘GREEN BRAND Germany’ certification for 2017/2018 and GERMAN BEAUTY AWARD 2015); printout of the website ‘organic-market.info’ as well as copies of the opponent’s newsletters, comprising the years 2012 and 2014. The newsletters include information of the test results in the period between 2012 and 2014 of the opponent’s ‘Lavera’ goods performed by various German magazines, such as ÖKO-TEST.

Attachment 7: Lavera marketing measures in TV and social media, especially using testimonials and Clips with Yvonne Catterfield.

Attachment 8 Fotos of Lavera stand in fair trades, the date is not visible, no indication about the country.

Attachment 9: A booklet of 2013 in English, which was available on the European market as advertising means for the opponent’s 25^th anniversary. It shows the product range of the opponent for the relevant ‘Lavera’ cosmetic products.

Attachment 10: Excerpt from German newspaper from 10/02/2016 (with its translation into English) stating that after Weleda, it is the company with the highest turnover on the German market for natural cosmetics.

 

Attachment 11: Results of customer survey titled as “Deutschland Kundenkönige” (Germanys Kings”) by the German research institute “Service Value” in relation with Bild of 2019 (07/2019), evaluating more than 3.000 companies.

Attachment 12: Results of a survey of the research company “infas 360” of August 29, 2019 in German regarding the German consumers ´awareness and buying behavior regarding dermatological brands in Germany. According to the chart 64,5 % of the interviewed public had heard of Lavera in relation to dermatological products. The Interviews took place in May and June 2019. According to the survey excerpts Lavera has a market share under the dermatological products of 21,2 % .

Attachment 13: Copy of a magazine article of the German online magazine “Presseportal”, dated 23/10/2019 reporting on the award ‘Branch of the Century- German Standards’, in German with English translation.

Attachment 14: Results of an online survey of the German national magazine “Focus” in cooperation with “Service Value” in German with English translation. The test refers to the quality of different brands online interviews on over 1400 brands. The interviews were realized from March to April 2020. Lavera is mentioned in the category natural cosmetic (Naturkosmetik).

Attachment 15: Copy of an article in English of the German trade journal “Cosmetic Business”, dated 21/04/2016, displaying Lavera as leading manufacturer in Germany of 2015.

Attachment 16: Copy of an article in ‘Länderreport Niedersachsen ( Regional Report Lower Saxony’ published on 21/06/2019 referring to market share, turnover and awareness among German consumers. The article is in German with an English translation attached.

Attachment 17: Copy of an interview with the opponents marketing manager Felix Klein, in the German trade journal “Marketing” dated 9/06/2020, stating the demand for Lavera products. The article is in German with an English translation attached.

Attachment 18: Copy of a decision of the German Patent Office, dated 15/06/2020. It states ‘Es spricht nach Auffassung der Markenstelle vieles dafür, dass es sich bei der Widerspruchsmarke um eine in der Union bekannte Marke für Körper- und Schönheitspflegemittel handelt. Jedoch kann dies nicht als entscheidungserheblich dahingestellt bleiben.“

Having examined the material listed above, the Opposition Division concludes that the earlier trade mark has not acquired a high degree of distinctiveness through its use on the market.

As far as the affidavit (Attachment 1) is concerned, Article 10(4) EUTMDR expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter. The same applies in respect to the content of interviews by person in the sphere of the opponent ( Attachment 18).

However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

Most of the evidence submitted in January 2020 consists of screenshots (printed of in 2020) showing the mark on products as well in Germany as in other countries, partially, the evidence is beyond the relevant period. The further attachment like the stand on the fair trade or the booklet for the 25^th birthday are not able to show more than use of the trade mark in relation to cosmetic products.

In relation to the certificates mentioned these do not show the awareness of the public in relation to products but that the trade mark or the producing process fulfils certain requirements.

In relation to the belated evidence, the applicant is right to point out that most of the evidence is beyond the relevant period, in most cases it is pointed out as well, that the period of the interviews is as well beyond this period. Moreover, it seems that these tests are drawn up annually so that the test report of this year only refers to the reported year and it’s not possibly to draw conclusions for other years.

As far as in the press articles the trade mark is mentioned as leading manufacturer or mentioned awareness percentages, these facts are not backed up with further material so that the relevant public and the method of the interviews especially questions in relation to the relevant goods remain unclear.

As far as the opponent refers to a decision of the German Patent Office it should be mentioned that its clear from the decision, that no final decision is taken in respect to the distinctiveness as it’s not important for the decision. Moreover, it’s not clear from the decision which evidence has been filed.

As far as the opponent refers to an older decision in order to argue the enhanced distinctiveness, so should be taken into account that as the applicant correctly points out, in this decision No. B 2 301 441 from 28/11/2014 the distinctiveness was only assumed for procedural reasons and as the decision has been taken in 2014, and the contested trademark in this case dates from 2019, the relevant period of time cannot overlap. However, the result coincides with other earlier decisions in which similar evidence has been filed.

e) Global assessment, other arguments and conclusion

 

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The goods and services have been assumed to be identical, the signs are aurally and visually below average and there is no conceptual similarity.

As shown above, there is no enhanced distinctiveness for any of the goods claimed. Although consumers generally pay greater attention to the beginning of a word sign than to the end (25/03/2009, T-109/07, Spa Therapy, EU:T:2009:81, § 30 and the case-law cited therein), the Opposition Division notes that this general rule, as regards the beginning of a mark, does not prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the marks must take account of the overall impression produced by those marks, since the average consumer normally perceives a mark as a whole and does not examine its individual details (27/06/2012, T-344/09, Cosmobelleza, EU:T:2013:40, § 52 and the case law mentioned therein; see, by analogy, 15/07/2015, R 3080/2014-2, KOPPARBRIGHT / ParBright, § 54).

As far as the opponent refers to some previous decisions of the Office to claim that the signs are similar it should be pointed out that the decisions referred to do not only coincide in three letters as in this case but in more letters (YESSEY vs YESEYA, NESTLE vs. NESDUO and TRONKY vs TRONMPI) or a part of the sign is descriptive.

This decision is in line with the majority of the previous decisions based on LAVERA trade marks were no likelihood of confusion has been found as the applicant correctly pointed out.

Considering all the above, there is no likelihood of confusion.

As this is the best case scenario, the result cannot be different for the rest of the public with an higher level of attention.

Therefore, the opposition must be rejected on the ground of Article 8(1)(b) EUTMR. The Opposition Division will continue to analyse the second ground, namely Article 8(5) EUTMR.

 

 

REPUTATION — ARTICLE 8(5) EUTMR

  

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

 

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

 

• The signs must be either identical or similar.

 

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

 

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

 

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the 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.

a) Reputation of the earlier trade mark

 

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark 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.

As no enhanced distinctiveness could be found, the requirements for reputation are also not met.

 

 

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) Conclusion

The claim under Article 8(5) EUTMR is also not successful.

 

COSTS

 

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

 

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

 

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

The Opposition Division

Astrid WÄBER

Claudia MARTINI

Peter QUAY

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.