OPPOSITION No B 2 344 904
MHCS, 9, avenue de Champagne, 51200 Epernay, France (opponent), represented by Baker & Mckenzie, Bethmannstr. 50-54, 60311 Frankfurt/Main, Germany (professional representative)
a g a i n s t
Chaindson GmbH & Co. KG, Justus-von-Liebig-Straße 2, 54516 Wittlich, Germany (applicant), represented by Wuesthoff & Wuesthoff Patentanwälte Partg MBB, Schweigerstr. 2, 81541 München, Germany (professional representative).
On 18/05/2016, the Opposition Division takes the following
2. The opponent bears the costs, fixed at EUR 300.
opponent filed an opposition against all the services of European
Union trade mark application No
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 shall 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 of 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 have been acquired 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: the 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.
For the purpose of procedural economy, the Opposition Division will now proceed assuming that the opponent has demonstrated, that the earlier trade mark has acquired reputation, in relation to the goods in Class 33: Alcoholic beverages (except beers), and within the territories for which the claim was made, namely United Kingdom, France and Germany.
The Opposition Division will enter into the examination of the evidence submitted regarding the above only if necessary.
MOËT & CHANDON
Earlier trade mark
The relevant territories are France, Germany and the United Kingdom.
Visually, the signs are similar to the extent that the earlier mark and the contested sign have some sequences of letters in common, namely ‘CHA’, at their beginnings, ‘ND’, in their middle parts, and ‘ON’, at their endings (reading from left to right).
The marks differ in the highly stylised typeface of the contested sign (i.e. black and white letters, with a black background for some of the letters, and the letter ‘A’, which inclines to the right) and the letters ‘i’ and ‘S’, which are not present in the word ‘CHANDON’ of the earlier mark. The marks also differ in the elements ‘MOËT’ and ‘&’ of the earlier mark.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the sequences of letters that they have in common, and as mentioned above, namely ‘c-h-a’ , ‘n-d’ and ‘o-n’. Depending on the pronunciation rules of the languages spoken by the relevant public, the pronunciation of these sequences of letter is, if not identical, at least highly similar. The signs are to this extent aurally similar.
The pronunciation differs in the sound of ‘MÖET’ and ‘&’ in the earlier mark, and in the sound of the differing letters ‘i’ and ‘S’ in the contested sign.
Conceptually, the element ‘&’ of the earlier mark is used in the relevant territories to indicate addition (i.e. ‘and’). However, this is not capable per se of attributing a concept to the earlier mark.
Neither of the signs has, as a whole, a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar.
The ‘link’ between the signs
As seen above, the earlier mark is reputed and the signs are similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a ‘link’ (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C‑408/01, Adidas, EU:C:2003:582, §§ 29 and 31, and of 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 and 52.)
In the present case, the goods and services involved are the following:
The goods on which the opposition is based, and in relation to which reputation is claimed to exist, are the following:
Class 33: Alcoholic beverages (except beers).
The contested services are the following:
Class 35: Advertising; business management; business administration; office functions; collating and systematic ordering of data in a computer database; organisational project management in the field of electronic data processing; outsourcing services; storage planning, procurement and distribution planning; business consultancy; consultancy and conducting of business and commercial transactions of industrial or commercial enterprises; quality management; employment agencies; personnel recruitment; personnel leasing; personnel management consultancy; rental of advertising space; providing of business and commercial contacts, including via the internet; temporary personnel services; arranging of contracts, for others, for the providing of services; online direct mail advertising; catalogue mail order, namely consultancy and organisation of mail order trading; process planning, namely professional business analysis and consultancy relating to material and information flows in companies; personnel planning.
Class 39: Transport; packaging and storage of goods; travel arrangement; freight-forwarding and transport brokerage; removal services; storage of goods; cargo unloading services; storage information; reservations; vehicle rental; warehousing, delivery of mail order goods.
Class 41: Education; providing of training; entertainment; sporting and cultural activities.
The goods on which the opposition is based consist of beverages that contain alcohol.
The contested services in Class 35 consist mainly of services rendered by persons or organisations principally with the object of helping in the working or management of a commercial undertaking, or helping in the management of the business affairs or commercial functions of an industrial or commercial enterprise, as well as services rendered by advertising establishments, primarily communicating with the public by issuing declarations or announcements using all means of dissemination. The contested services in Class 39 consist mainly of services for the transport of people, animals or goods from one place to another (by rail, road, water, air or pipeline) and services necessarily connected with such transport, as well as services relating to the storing of goods in a warehouse or other building for their preservation or safekeeping. Lastly, the contested services in Class 41 consist mainly of services rendered by persons or institutions in the development of the mental faculties of persons or animals, as well as services intended to entertain or to engage the attention, and services related to sports and cultural activities.
The goods and services herein involved are completely different in nature, purpose and method of use, they belong in different markets and they are not found at the same points of sale. They are neither complementary nor in competition. Their distribution channels are completely divergent: they do not target the same consumers and they do not come from the same kinds of companies.
It can be established that there is no overlap between the relevant sections of the public for the trade marks in dispute. Each trade mark targets a different type of public. The kind of companies offering the contested services are specialised companies, which are completely different from the kind of specialised companies producing alcoholic beverages. Therefore, the kind of companies producing or offering the goods and services covered by the marks in dispute are selling in completely different markets.
According to the above, despite the similarity between the signs to which reference is made in section a) above, the contested sign is unlikely to remind the relevant public of the earlier mark, at least when related to goods and services with such a high degree of dissimilarity as the ones herein involved. It is therefore unlikely that the contested mark would remind the relevant consumers of the earlier mark.
Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.
It is therefore not necessary to enter into the examination of the evidence submitted by the opponent for the purpose of proving the reputation of the earlier mark claimed (see PRELIMINARY REMARK) or the evidence submitted in relation to the Proof of Use request.
According to Article 85(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 Rule 94(3) and Rule 94(7)(d)(ii) 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
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.